Can Famous Book Titles Be Registered as Trademarks? The Jungle Book and Pinocchio Cases

Disney, Studio Ghibli, and other major content companies regularly seek to register famous book and film titles as trademarks — both to protect existing franchise IP and to monetise classics through merchandising, theme parks, and adaptation rights. But EU trademark law has been consistently restrictive toward titles of famous works, treating them as descriptive of the underlying content rather than as commercial origin indicators. Two leading EUIPO decisions illustrate the framework: “THE JUNGLE BOOK” (refused 2015) and “PINOCCHIO” (refused 2014) — both household names that the EUIPO held were perceived by consumers as story references rather than trademarks.

For the broader trademark framework, see our coexisting trademarks guide. For the standard distinctiveness test, see our Mr. Kebab case.

The framework: Article 7(1)(b) EUTMR

Under Article 7(1)(b) of Regulation 2017/1001 (current EUTMR), trademarks must possess distinctive character: they must be capable of identifying the commercial origin of goods or services. Where a sign is perceived by the relevant public as describing or referring to the content of the goods rather than indicating origin, distinctiveness is lacking and registration must be refused.

The framework applies particularly to famous titles of books, films, songs, and other creative works. The EUIPO and CJEU have consistently held that consumers familiar with the underlying work perceive the title as a content reference — not as a trademark indicating the source of the goods.

The Jungle Book case (2015)

In EUIPO First Board of Appeal decision R118/2014-1 (18 March 2015), the applicant sought to register “THE JUNGLE BOOK” as a word mark across Classes 3, 9, 14, 16, 18, 20, 21, 24, 25, 28, 29, 30, 32, and 41 — covering essentially every merchandising category. Third-party observations were filed, citing the title as a famous collection of stories by Rudyard Kipling (1865-1936).

The Board concluded:

• “THE JUNGLE BOOK” is primarily well-known as the title of Kipling’s story collection;
• The title has appeared in numerous adaptations (books, films, TV series — including Disney’s classic 1967 animated film and 2016 live-action version);
• The sign lacks inherent distinctive character;
• The relevant public would instantly understand it as referring to story-related goods/services (books, recordings, films, entertainment, theme parks) rather than indicating commercial origin;
• Even the broad merchandising scope did not overcome the descriptive character.

Registration was refused. The decision confirmed that famous titles in the public domain cannot be monopolised through trademark registration.

The Pinocchio case (2014)

The parallel decision in EUIPO Board case R1856/2013-2 (Pinocchio) applied the same framework to the famous title by Italian author Carlo Collodi (1881-1883). Pinocchio is similarly a household name across the EU through countless adaptations (Disney 1940 animated film, multiple live-action and animated remakes, theatre productions, theme park attractions). The Board refused registration on the same grounds: consumers would perceive “PINOCCHIO” as a content reference, not as a trademark indicator.

The Pinocchio decision is particularly significant for Italian commercial actors: famous Italian literary classics (Pinocchio, I Promessi Sposi, Pirandello’s plays, Calvino’s stories) face the same registration hurdles. Italian publishing and entertainment companies seeking to leverage classic Italian literature for merchandising must structure protection through other IP frameworks (copyright on specific adaptations, trade dress for distinctive visual elements, design rights for products).

When can titles be registered

Famous titles can sometimes be successfully registered where:

• The title is less universally famous: lesser-known titles may still qualify as distinctive indicators (case-by-case assessment);
• The title is combined with distinctive figurative elements: a stylised logo combining the title with distinctive graphics may achieve registration;
• Restricted categories: narrow goods/services scope may avoid descriptiveness concerns (e.g., a title for an unrelated product category);
• Acquired distinctiveness: substantial evidence of use as a trademark (separate from the literary work) may establish acquired distinctiveness under Article 7(3) EUTMR;
• Living author with copyright: where the underlying work is still copyright-protected, the rights holder controls adaptation rights independently of trademark.

Italian-specific considerations

Italian framework parallels the EU approach through the Italian Industrial Property Code (D.Lgs. 30/2005):

• Article 12 CPI: requirements for protectability;
• Article 13 CPI: descriptiveness and absolute grounds for refusal;
• UIBM Italian national filings face the same restrictive framework for famous titles;
• Italian classic literature in public domain (Manzoni’s I Promessi Sposi, Collodi’s Pinocchio, Dante’s Divina Commedia, Boccaccio’s Decameron) cannot be monopolised through Italian or EU trademark registration.

For Italian content companies seeking to leverage classic literature commercially, alternative strategies include: copyright on specific adaptations (films, theatrical productions, illustrated editions); design rights on specific visual interpretations; trade dress for distinctive product appearance.

How DANDI supports brand and content owners

DANDI.media supports Italian and international brand owners and content companies on trademark titles and famous work strategy:

• Pre-filing assessment of title registrability;
• Combined trademark strategy with figurative elements;
• Acquired distinctiveness evidence preparation;
• Alternative IP protection for classic public-domain works;
• Copyright and adaptation rights coordination;
• Defence against opposition based on famous title claims.

For consultation, book directly with Avv. Claudia Roggero or Avv. Donato Di Pelino.

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