OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
The Boards of Appeal
UNOFFICIAL DOCUMENT FOR INFORMATION PURPOSES ONLY
DECISION
of the Fourth Board of Appeal
of 31 August 2015
In Case R 2401/2014-4
Anne Frank Fonds
Steinengraben 18
CH-4051 Basel
Switzerland
Owner / Appellant
represented by CABINET UGGC, 47, rue de Monceau, F-75008 Paris, France
APPEAL relating to International Registration No 11 063 307 designating the
European Union
THE FOURTH BOARD OF APPEAL
composed of D. Schennen (Chairperson and Rapporteur), E. Fink (Member) and
L. Marijnissen (Member)
Registrar: H. Dijkema
gives the following
Language of the case: French
DECISION OF 31 AUGUST 2015 – R 2401/2014-4 – LE JOURNAL D’ANNE FRANK
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Decision
Summary of the facts
1
On 20 December 2013, Anne Frank Fonds (‘the owner’) sought to designate the
European Union with respect to the international registration of the word mark
Le journal d’Anne Frank
for the following goods and services:
Class 9 – Recorded optical, magnetic or electronic data media containing sounds and/or images,
particularly compact disks; DVDs; sound recording disks; video cassettes; magnetic audio tapes;
exposed films, exposed cinematographic films, electronic publications.
Class 16 – Printed matter; periodicals; magazines; newspapers and books.
Class 41 – Theater productions; showing of films; arranging of guided tours for cultural or
educational purposes.
2
By a decision of 1 August 2014, the examiner refused protection of the
aforementioned international registration designating the European Union since it
failed to meet the registration requirements set out under Article 7(1)(b) CTMR
with respect to the goods and services listed above.
3
The principal ground cited under Article 7 CTMR was that trade marks consisting
solely of the title of a book or well-known story cannot be distinctive within the
meaning of Article 7(1)(b) CTMR in relation to any goods and services which
may relate to that story. The reason cited was that some stories (or their titles) are
so old and so well-known that they have ‘become part of the language’ and
cannot mean anything other than a particular story. The examiner cited the
provisions set out in the new guidelines for examination at the Office, which
entered into force on 1 February 2014.
4
The word elements ‘Le journal d’Anne Frank’ [meaning ‘Anne Frank’s diary’]
cannot play a distinctive role in relation to books, films or theatre productions,
because consumers would simply consider these goods and services to relate to
the life story of Anne Frank, which would be the only meaning of the words in
question.
5
In the examiner’s opinion, objections should only be raised when the title in
question is famous enough for the relevant consumer to actually be wellacquainted with it and when the trade mark may be perceived, with respect to the
goods and services, as essentially denoting a title of a book or well-known story.
6
The examiner dismissed the owner’s arguments concerning the fact that several
similar registrations had previously been accepted.
7
The examiner agreed with the owner that titles may indeed constitute filed trade
marks. However, in the present case, everyone knows about Anne Frank’s life
story, which has formed the subject of a number of adaptations originating from
many different sources.
DECISION OF 31 AUGUST 2015 – R 2401/2014-4 – LE JOURNAL D’ANNE FRANK
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8
The examiner concluded that the fame of the sign ‘Le Journal d’Anne Frank’
prevents it from being registered, because the sign, since it does not contain any
distinguishing features, shows that a variety of goods and services exist, such as
CDs, DVDs, printed matter, periodicals, magazines, newspapers and books,
theatre productions, the showing of films and the arranging of guided tours for
cultural or educational purposes, all relating to the life, family and diary of Anne
Frank.
Grounds of appeal
9
On 16 September 2014, the owner filed notice of appeal against the contested
decision. A statement of grounds of appeal and the annexes thereto were received
on 30 November, 1 December and 2 December 2014. In the statement setting out
its grounds of appeal, the owner requests that the contested decision be annulled
so that the trade mark can be accepted for registration, owing to its distinctive
character. The annexes mainly consist of decisions given by the Office or the
General Court, judgments given by national offices or courts, and filed or
registered trade marks that contain the title of a work. The owner has also
submitted a declaration dated 20 November 2014 made by Anne Frank Fonds’
British legal representative, and accompanied by a partial French translation,
relating to filings of British trade marks (Annex 9), together with some English
extracts (without any French translations being provided) taken from the website
of the Anne Frank Fonds foundation, www.annefrank.ch (Annex 10).
10 The holder reiterates that the reasoning based on the fame of the sign alone is
irrelevant, as there is no provision that prevents well-known signs from being
protected as trade marks. The examiner has herself acknowledged that titles may
be protected as trade marks. The fame of the title of a book or of a character,
arising from the fact that the public is very familiar with the contents of that book
or the story told by that character, cannot be considered as a barrier to its function
as an indicator of origin.
11 The examiner has not provided any explanation concerning the application of an
assessment criterion based on whether or not a title is ‘universally known’.
12 The assumption of the non-distinctiveness of famous book titles as stipulated in
the new guidelines on book titles would give rise to uncertainty over the fame
threshold that should not be passed. The titles of books have been isolated from
those of other works (musical, audiovisual, choreographic, etc.) for no reason.
13 The sign ‘Le journal d’Anne Frank’ has been registered in several countries.
14 The fame of a work or of its title does not prevent that work or title from being
registered as a trade mark. Fame is a subjective concept. It can be immediate, or
gained through the publicity initiatives put in place by its author or its rights
holders. In addition, the consumer is used to associating the title of a work, and
goods and services, to a specific source, namely the natural or legal person from
which the disclosed work originates.
DECISION OF 31 AUGUST 2015 – R 2401/2014-4 – LE JOURNAL D’ANNE FRANK
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15 It is generally accepted that titles are doubly protected by copyright and trade
mark law.
16 The examiner’s observation that the word ‘Journal’ meaning, ‘Qui se rapporte à
chaque jour ; relation de pensées, de faits ou d’événements de la vie d’une ou de
plusieurs personnes dont le compte rendu, écrit de façon régulière sinon
quotidienne, est parfois destiné à être publié’ [‘something that is daily; a record
of thoughts, facts and events of the life of one or more individuals, which is
written on a regular if not daily basis, and which is sometimes intended for
publication’] has not been disputed by the owner.
17 The definition of the word ‘Journal’ does not on its own make it possible to
conclude that the sign, when taken as a whole, is devoid of any distinctive
character.
Reasons
18 The appeal is admissible. It is also well-founded.
19 Pursuant to Article 7(1)(b) CTMR, trade marks which are devoid of any
distinctive character, in other words those which are not inherently distinctive and
do not allow the goods or services of one undertaking to be distinguished from
those of another undertaking, cannot be registered.
20 Trade marks are devoid of any distinctive character if their semantic content will
first and foremost be perceived by the relevant consumer as a means for
conveying information rather than as an indication of the commercial origin of
the services (03.07.2003, T-122/01, Best Buy, EU:T:2003:183, § 30).
21 According to settled case-law, distinctive character must be assessed, first, by
reference to the perception of the relevant public and, second, by reference to the
products or services in respect of which registration has been applied for
(08.05.2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 67).
22 Given the nature of the goods and services at issue, the relevant public in the
present case will be made up of average consumers having an average level of
attention.
23 In short, the examiner raises four main points as to why the trade mark made up
of word elements should be refused pursuant to Article 7(1)(b) CTMR:
 Everyone knows about Anne Frank’s life story, which belongs to the
category of universally known stories. It has formed the subject of a number
of adaptations originating from many different sources.

The titles of the books in the Harry Potter series that have been registered as
Community trade marks are not comparable to the present trade mark, since
Harry Potter is first and foremost the name of the character.
DECISION OF 31 AUGUST 2015 – R 2401/2014-4 – LE JOURNAL D’ANNE FRANK
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
‘PINOCCHIO’ is the name of the character in the novel ‘The Adventures of
Pinocchio’, in the same way as ‘HARRY POTTER’: these names are in
themselves fairly distinctive.

The fame of the sign ‘Le journal d’Anne Frank’ constitutes, in the present
case, a barrier to its registration. The sign does not contain any distinguishing
features.
24 First of all, the issue of the universal knowledge of a work or of its title is, as the
owner has pointed out, a vague criterion that is difficult to quantify. Admittedly,
it is reasonable to believe that a great many people know about Anne Frank’s life
story, which has undoubtedly touched millions of people. The title of her diary is
also well-known. It is likewise reasonable to believe that the relevant public will
form part of those millions of people. However, the examiner has given an ex
officio ruling on just how well-known Anne Frank’s life story is, without having
provided any evidence or information capable of supporting such a finding.
25 In any case, even if the title ‘Le journal d’Anne Frank’ is well-known to the
public (which, moreover, has not been clearly demonstrated by the examiner),
that title is known only in relation to a specific book, which tells a specific life
story. The title of this book is therefore unique. The existence of multiple
versions or adaptations does not alter the fact that ‘Le journal d’Anne Frank’ is
the unique and distinctive title of a specific book.
26 The expression ‘Anne Frank’ is in no way descriptive and strictly speaking does
not mean anything, since it consists of a forename and a surname. It cannot be
justifiably claimed that this expression has become part of the French language
and has taken on a sense or meaning that would not escape the public. At the very
least, the examiner has not demonstrated such a claim to be true. The word
‘journal’ has been correctly defined by the examiner. Therefore, when taken as a
whole, the expression ‘Le journal d’Anne Frank’ describes neither the goods and
services at issue nor any of their characteristics.
27 Secondly, the reasoning for refusing protection that is based on the example of
the registered trade mark Harry Potter as a character’s name is irrelevant. The
fictional or real-life nature of a name featuring in the title of a book has no
bearing on the distinctiveness of the trade mark taken as a whole.
28 Indeed, when used in the context of the title of a work, how could one
combination of a forename and surname be more or less distinctive than another
in relation to the goods and services at issue as listed in paragraph 1 above? In
what way would the Harry Potter name appear more distinctive than Anne Frank
with respect to the same goods and services?
29 The refusal of the present trade mark is based on a particular interpretation of the
examination guidelines currently in force. The examiner supports her argument
by citing the trade marks ‘Peter Pan’, ‘Cendrillon’ [Cinderella] and ‘l’Iliade’ [The
Iliad], as examples. She in fact explains that these trade marks may be registered
for goods and services that do not relate to the stories of ‘Peter Pan’, ‘Cendrillon’
and ‘l’Iliade’, which are the only respective meanings of the words in question.
DECISION OF 31 AUGUST 2015 – R 2401/2014-4 – LE JOURNAL D’ANNE FRANK
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These trade marks would, on the other hand, be distinctive in relation to goods
such as paints, clothing or pencils. However, this argument is devoid of any logic.
30 The issue of the content or subject of the CDs, DVDs, printed matter, theatre
productions and other goods and services at issue has not been raised. The Board
in fact stresses that the unique and distinctive title ‘Le journal d’Anne Frank’
does not mean anything in relation to the designated goods and services.
31 Lastly, the contested decision is also, and above all, based on the assumption that
the fame of the expression ‘Le journal d’Anne Frank’ constitutes, in the present
case, a barrier to its registration as a trade mark.
32 It cannot be justifiably claimed that the repute of a name may constitute a barrier
to the registrability of a sign. How can it in fact be justified that, simply because
‘everyone knows about Anne Frank’s life story’, the sign ‘Le journal d’Anne
Frank’ is devoid of any distinctive character through its reference to just one
single work? The titles of works serve, by their very nature, to distinguish the
name of one book from other works. It should be recalled that the distinctiveness
of a mark within the meaning of the article in question means that the mark serves
to identify the product in respect of which registration is applied for as originating
from a particular undertaking, and thus to distinguish that product from those of
other undertakings (12.07.2012, C-311/11 P, Wir machen das Besondere einfach,
EU:C:2012:460, § 23).
33 When it is associated with the goods and services at issue, this name is not devoid
of any distinctive character in so far as it indicates their origin. This is because
the consumer will be able to recognise the ‘recorded optical, magnetic or
electronic data media containing sounds and/or images, particularly compact
disks; DVDs; sound recording disks; video cassettes; magnetic audio tapes;
exposed films, exposed cinematographic films, electronic publications; printed
matter; periodicals; magazines; newspapers and books; theater productions;
showing of films; arranging of guided tours for cultural or educational purposes’
as originating from the owner, and will be able to distinguish them from these
rivals.
34 The examiner has failed to explain why a requirement for availability exists. In
actual fact, and since the present case involves the protection of a trade mark,
there is no need to justify whether a third party could legitimately profit
financially from the work of Anne Frank, her life story and her tragic fate, while
the holder is making commercial use of this title. In any case, the requirement for
availability does not exist in Community trade mark law. Consequently, there is
no need to examine whether the registration as a trade mark would be
incompatible with copyright protection. In actual fact, a copyright attached to a
literary work (identified by its title) is not affected by the registration of a
Community trade mark (see Article 53(2)(c) CTMR) or an international
registration designating the European Union.
35 Consequently, the sign at issue could be perceived by the relevant consumer as a
trade mark capable of indicating the specific origin of the manufacturer, and
DECISION OF 31 AUGUST 2015 – R 2401/2014-4 – LE JOURNAL D’ANNE FRANK
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therefore possesses the minimum degree of distinctiveness required under
Article 7(1)(b) CTMR.
36 It follows that the contested decision must be annulled.
DECISION OF 31 AUGUST 2015 – R 2401/2014-4 – LE JOURNAL D’ANNE FRANK
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Order
On those grounds,
THE BOARD
Annuls the contested decision and orders the withdrawal of the refusal of
protection for the international registration designating the European Union.
Signed
Signed
Signed
D. Schennen
E. Fink
L. Marijnissen
Registrar:
Signed
H. Dijkema
DECISION OF 31 AUGUST 2015 – R 2401/2014-4 – LE JOURNAL D’ANNE FRANK