COMMENT: Can you trademark a film title?

Most producers are by now well versed in the need to ensure all necessary intellectual property rights and clearances are obtained for film content. 

But the need to exercise the same amount of care when choosing the title of the production is sometimes overlooked.

You may have heard things like: “You can’t trademark a film title” - but is it always true?

The law varies from country to country. In England, there is no rule which prohibits the registration of a title as a UK or EU trademark, provided it can meet the basic requirements imposed on all trademarks.

The reason the above saying exists is that some film titles struggle to meet the requirement of “distinctiveness” – in other words the ability to distinguish between the goods/services of one business from those of another.

However, a lack of distinctiveness is something that can be overcome through careful management of the way in which a trademark is exploited, to educate the public about its function as an identifier of commercial (as opposed to merely artistic) origin; and indeed many film titles are protected as registered trademarks.

Licensing

The main value of film title trademarks is of course licensing merchandise, and policing unauthorised products. 

Using a title which is identical to a registered trademark in respect of goods or services which are identical to those for which it is registered without permission will, on the face of it, amount to trademark infringement. Using a name which is similar may also infringe, if there is a likelihood of confusion.

If a title is not registered as a trademark, it may nevertheless be protected as an unregistered trademark under the law of passing off, but this is much harder to get off the ground. 

Clearance

This also highlights the importance of carrying out appropriate trademark clearance searches when choosing a title.

If those searches reveal an existing trademark, or if you have started using a name and recently become aware of a potentially conflicting earlier trademark, the implications of this need to be considered carefully.

Depending on the stage of production, you may be able to:

(a) adopt a different title;

(b) attempt to negotiate a licence to use the title from the trademark owner;

(c) in some cases it may be possible to avoid the issue entirely.

For example, it may be possible to argue that the name you propose to use does not constitute ‘trademark use’ (in the legal sense) at all, or that it is merely descriptive of the subject matter or other characteristics of the film, which could constitute a defence.

Equally, you may be able to make certain changes to the way the title, and the film generally, are presented; for example, to ensure it does not mislead the public into believing that you have been licensed or authorised by the owner of the earlier trademark, so as to make a passing off action less likely to succeed.

All of these arguments are very fact-dependent, so the best advice is to obtain specialist advice (ideally at an early stage) and conduct a proper risk analysis.

Your lawyer can also advise on the registrability of a film title as a trademark, and how it should be exploited to preserve its trademark value.

Kostyantyn Lobov advises on disputes involving intellectual property and related rights at London law firm Harbottle & Lewis