UK: No Trade Mark Protection For James Bond Brands

Last Updated: 14 August 2009
Article by Carolyn Fink

Danjaq LLC, the company behind the James Bond film franchise, has failed to prevent the registration of its well known film titles 'Dr No' and 'From Russia with love' by third parties as trade marks in the European Community and the United Kingdom in the following cases. 

Danjaq v OHIM

Danjaq appealed to the Court of First Instance (CFI) against the rejection by the Community Trade Mark Office (OHIM) of its opposition to an application by German media company, Mission Productions for 'Dr No' (the application). 

Danjaq claimed that:

  • the application was identical to Danjaq's mark and referred to identical or similar goods pursuant to Article 8(1) of the Community Trade Mark Regulations (40/94/EEC) (CTMR); 
  • Danjaq's mark was a well known mark pursuant to Article 8(2) CTMR; and
  • it had used the term as a trade mark for many goods prior to the application by Mission Productions in 2001 pursuant to Article 8(4) CTMR. 

The CFI refused Danjaq's appeal in respect of the Article 8(1) and 8(2) grounds on the basis that Danjaq had not used the 'Dr No' mark as a trade mark for the following reasons:

  • Danjaq's use of the 'Dr No' marks on DVDs and video cassettes was as an indicator of artistic rather than commercial origin (which was actually indicated by other signs, such as '007' and 'James Bond'; and
  • Danjaq's use of the 'Dr No' marks on books, comics and posters was in fact descriptive, indicating to consumers that the origin of the goods was the film 'Dr No' or that character. 

The CFI also refused Danjaq's claim under Article 8(4) since Danjaq's use of its marks did not amount to trade mark use.

Danjaq's Opposition To UK Trade Mark Application For 'From Russia With Love' By Faberge Limited

Danjaq opposed Faberge's application for registration of 'From Russia with love' in class 14 goods (primarily watches and the like) (the application).  Danjaq relied upon its earlier Community Trade Mark Registration No 004333308 for 'From Russia with love' which covered class 9 goods such as computer games, video cassettes and DVDs (the prior mark).  

The hearing office rejected Danjaq's claims that:

  • the application was identical to, and referred to similar goods to the prior mark and was a 'well-known mark' (section 5(2)(a) and section 6(1)(c) of the Trade Marks Act 1994 (TMA), on the basis that the respective goods were different and there were insufficient sales by Danjaq under the prior mark to constitute a well-known mark; 
  • the application took 'unfair advantage of and would be detrimental to the distinctive character of the prior mark (section 5(3) TMA), since Danjaq had commenced sales of goods under the prior mark subsequent to the filing date of the application and therefore had not acquired the necessary reputation; and
  • Faberge's use of the subject mark amounted to a misrepresentation by Faberge that it was Danjaq's licensee in accordance with the law of passing off (section 5(4) TMA) on the basis that consumers would not necessarily believe that Faberge was licensed by Danjaq.

Comment

Both these cases highlight the need for media and entertainment organisations to secure registered trade mark protection at an early stage for their brands, particularly since there is no copyright protection for titles under English law.  Indeed, the initial decision of OHIM in respect of 'Dr No' prompted Danjaq to apply for registration for all the other James Bond film titles as community trade marks.  To date, 18 have been registered but oppositions have been filed by third parties to 'Casino Royale', 'Octopussy' and 'Goldeneye'. 

In addition, due to the value of ancillary rights exploitation such as merchandising in the film, television and music industries, brand owners must ensure that their trade marks are used correctly to indicate the commercial rather than artistic origin of the relevant goods and services referred to by the marks.  Otherwise, trade mark rights in well-known and valuable brands (even if registered as trade marks), may not be enforceable against unlicensed third parties, which ultimately could impact on their licensing value.  Given that the core assets of a media company are its intellectual property rights, this is an area of real concern.

Danjaq LLC v OHIM, Case T-435/05 June 2009

Opposition No 94440 by Danjaq to UK Trade Mark Application No 2387842 for 'From Russia with love' by Faberge Limited, 23 June 2009

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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