Whether a title of a book can be registered as a trademark !

As an IP lawyer while reading one judgment, I inspire myself to write this article in respect of a subject that whether a title of a book can be registered as a trademark. The basic information pertaining for getting a trade mark registered is that that trade mark must not have been devoid of a distinctive character. It must be capable of distinguishing the goods or services of a person from those of another person and it must be capable of being represented graphically.  Such a trade mark must not be within the purview of the provisions of section 9 and 11 of the Trademarks Act 1999 (herein after referred as Act for short) 

Coming to the captioned point of this article, let me visualize that whether a title of a book is capable enough to distinguish the goods i.e. book of one publisher from that of other publisher. Whether a title is descriptive or whether that title of a book has a distinguishing feature or characteristic of a book within the meaning of the provisions of the Act. Whether there are sufficient evidences to establish that the title of a book has acquired distinctive character qua that book of which it is a title.

In the case of Anne Frank-Fond's Trade Mark Application reported in (2015) R.P.C. 31 The applicant, a charitable foundation, applied for the registration of book titles namely 'THE DIARY OF ANNE FRANK and THE DIARY OF A YOUNG GIRL for trade marks in relation to goods and services including “printed matter, periodicals; magazines; newspapers and books' in class 16 and “arranging of guided tours for cultural or educational purposes'.  Both applications were rejected under S.3 (1) (b) and 3(1) (c) of the U.K. (section 9 of the Indian Trademarks Act, 1999) Trade Marks Act 1994 though the evidence of use was filed to establish distinctiveness.  

The applicant filed evidence of witness consisting a statement that the role of the applicant as a licensor with regard to reproductions and adaptations of the 'The Diary of a Young Girl' and 'The Diary of Anne Frank' marketed in visual, audio and audio-visual form in the U.K. and elsewhere in the world to satisfy that the provisions of the Section 3(1) of the Act had not come in the way of registration. The applicant also showed that the book under the title 'The Diary of Anne Frank' was fourth in the Top 10 books written by women. It was also shown that the Diaries of Anne Frank were added to the list of documentary heritage of exceptional value on UNESCO's Memory of the World Register along with the other historical records from around the world.

The hearing officer rejected the application for registration giving reasons that the mark applied for consists exclusively of a sign which may serve, in trade, to designate the   kind, quality, quantity, intended purpose, value, geographical origin, the times of production of goods or of rendering of service or goods i.e. subject matter and is therefore excluded from registration by section 3(1)( c ) of the Act. Moreover, it was observed by the hearing officer that in case of 'The Diary of a Young Girl' and 'The Diary of Anne Frank' the evidence clearly shows that the mark has been used by a number of different publishers to indicate the title of the work. This is not use in trade mark sense. But it is a use indicating to a potential reader the subject matter of the book. The title is not being used to distinguish the goods of one publisher from those of another. No evidence stated that at the date of application, the average consumer had been educated into seeing the sign as indicating the trade origin of the goods or services and therefore, the mark is excluded from acceptance as it fails to qualify under section 3(1)(b) and (c) of the Act.

Subsequently, an appeal was filed before the appointed person against the Order passed by the hearing officer. The issue in Appeal was that whether the hearing officer had made an error by rejecting an application after deciding that titles of the books did not possess the distinctive character in view of the provisions of S.3. (1)(c) of the Act. The question was that whether famous book titles were a “characteristic' of goods was an issue involved in the case.

In Appeal the appointed person made observation in respect of the Article 6quinquies (B2) of the Paris Convention for the Protection of Industrial Property and the provisions of Article 3(1)(c) of the Trade Marks Directive and Article 7(1)(c) of the Community Trade Mark Regulation and section 3(1)(c) of the Act about the exclusion of trademarks from registration. The appointed person observed in negative way that there is no any real room for uncertainly about the way in which ownership and exploitation of copyright may have a factual role to play inconsequentially from a trade mark point of view. In respect of descriptiveness. In the case Bach Flower Remedies Ltd vs.  Healing Herbs Ltd, reported in (2000) R.P.C. 513, it was observed that it cannot be said that fame necessarily enables a sign to individualize goods or services of all kinds to a single economic undertaking. Relying on this judgment, it is also held that a sign is liable to be excluded from registration in relation to goods of the kind for which it is descriptive and therefore, the appeal was dismissed.

As per Nice Classification (Class-16, 160095), a book, a book's cover can be considered as trademark. If title of the book is distinctive and becomes the source identifier, it can be registered as a trade mark, provided that a book is considered as goods. Generally, a title of a book is a source or a key of the description of the book. In that case title cannot be called distinctive. For example, if the title of a book is 'ROSES IN DECEMBER' for the book written by Hon'ble Justice M.C. Chagla, for his personal experiences of life, then that title becomes distinctive for that book, however, the title of that book is 'ROSES IN DECEMBER an autobiography' then this title becomes descriptive as having looked it, one can come to know that this book is an autobiography of Hon'ble Justice M.C. Chagla. From the title of the book when a reader comes to know about the contents of the book, that title becomes descriptive and therefore, it cannot be registered as trademark, provided that the title is having secondary meaning of goods in trademark sense. By having the title of the book HARRY POTTER, a reader is unable to know what is inside the book, such title is distinctive in the trade mark sense.