22.20. Titles of well known books, novels, stories, plays, films, stage shows, songs and musical works

Date Published 19 Dec 2022

Recognisable titles of cultural products are often capable of distinguishing goods and services and raise no special issues under s 41. For example, a restaurateur may want to use the title of a book or film as the name of his or her restaurant. The ordinary signification of the words in the title is unlikely to bear any logical relationship with restaurant services, such that it cannot be said that other traders would have any need to use it. By way of illustration, in Jolly Swagmen Pty Ltd v Lomas [2002] ATMO 19 the Hearing Officer considered that WALTZING MATILDA for goods in classes 29, 30, 31 and services in classes 35 and 42 was prima facie capable of distinguishing those goods and services.

However, where the application for registration of a mark consisting of a recognisable title is in relation to digital media goods in class 9, printed matter in class 16, and/or education or entertainment related services in class 41, more difficult questions may arise. As a general rule, a distinction needs to be drawn between the titles of cultural products that are still in copyright and those that are in the public domain.

For as long as a cultural product is in copyright, consumers can and do rely on the title of that cultural product to identify the goods and services they are looking for. As a factual and practical matter, a title of a cultural product distinguishes the abovementioned class 9 or 16 goods or class 41 services dealt with or provided by the copyright owner from goods or services so dealt with or provided by any other person (s 17). In such cases, it is likely that a ground of objection under s 41 will be raised only where the title of the cultural product would be understood as describing the content or subject matter of the specified goods or services.

In contrast, once a cultural product is in the public domain, the title of that cultural product no longer acts as a reliable indication of trade source and there is a strong likelihood that traders will wish to use the title to indicate that they are trading in that cultural product – for example, that they are selling the book or staging the play that bears the title in question. A ground for rejection may therefore be raised in relation to an application for registration of a trade mark of this nature for goods in classes 9 and 16 and services in class 41 if the cultural product in relation to which the title is recognisable is clearly in the public domain and research shows that:

the title will be viewed by purchasers as a description of the content or subject matter of the goods or services,
OR
the work in question is perceived to be a classic, and the term sought to be registered has meaning only as the title of a work.

The following table provides some illustrative examples:

Trade mark	Section 41 objection?	Reasons
A Streetcar Named Desire	No	Although the play with this title is viewed as a “modern classic” (1940s), it is not clearly in the public domain (since the playwright, Tennessee Williams, died in 1983). The words ‘A Streetcar Named Desire’ have no apparent meaning, except as the title of the play and derivative works based on it.
In Cold Blood	No	Although the book with this title is also recognised as a “modern classic” (1960s), it is not clearly in the public domain (since the author, Truman Capote, died in 1984). In addition, even though the words ‘in cold blood’ allude to a crime committed without mercy, the words would not contain a direct reference to the content or subject matter of the relevant class 9 or 16 goods or class 41 services.
The Rise and Fall of the Third Reich	Yes	While the work of history with this title is not in the public domain (the author, William Shirer, having died in 1993), a ground for rejection would exist, since the ordinary meaning of the words ‘the rise and fall of the Third Reich’ is that they describe the subject matter of a cultural product dealing with the history of Nazi Germany.
Macbeth	Yes	The ordinary signification of this word is the title of Shakespeare’s classic play. Shakespeare’s plays regularly appear on high school and university syllabuses and are performed regularly on the stage. This has resulted in a number of commentaries, literary critiques, study aids and other analysis, such that the play ‘Macbeth’ itself has become the subject matter of a publication (in the same way that DOGS or GARDENING would be viewed as the subject matter of a publication having this title).
Little Red Riding Hood	Yes	The title of a classic folk tale which is clearly in the public domain. When used in relation to books, films, stage shows, etc, the words are likely to be seen merely as the title of the work, which traders would wish to use for that purpose (for example, in publishing new versions, or producing a stage show with that title).
Away in a Manger	Yes	The title of a well-known Christmas carol that is in the public domain, which would be recognised only as a song title, and which other traders would wish to use for that purpose.
Beethoven’s 5th Symphony	Yes	This popular and well-known musical work is clearly in the public domain. The words signify only the composer and title of the musical work, and it is the subject of a number of critiques and study aids, as well as being a work that others would wish to use in relation to performances and recordings.

Amended Reasons

Amended Reason	Date Amended
Reviewed - no changes.	19 Dec 2022
Update hyperlinks	20 Apr 2022
Update hyperlinks	20 Apr 2022
Update hyperlinks	20 Apr 2022
Minor correction of MATLIDA to MATILDA	20 Feb 2021
Amend all content and examples	17 Feb 2021