Monday, July 6, 2009

James Bond fails again to defeat DR. NO European Union trademark application

While my primary focus is typical on news and decision related to U.S. trademark law, I’m making a exception given that the subject matter of this ongoing Community Trade Mark dispute involves James Bond.

Danjaq LLC (“Danjaq”), the company which owns all of the intellectual property rights associated with the famed JAMES BOND movie franchise, has lost another round in its ongoing opposition battle against a German Company seeking to register the mark DR. NO with the Office for Harmonization in the Internal Market (Trade Marks and Designs) (“OHIM”) ), the body in charge of registering Community Trade Marks valid throughout the European Union. See Danjaq LLC v. OHIM et al, Case T‑435/05 (Ct. First Instance June 30, 2009).

The Court of First Instance affirmed the decision by the lower OHIM tribunals to dismiss Danjaq’s opposition on the basis that Danjaq had not proven that the name DR. NO had been used by Danjaq as a trademark (i.e., source identifier) prior to the filing date of Mission Productions’ application.

On June 13, 2001, Mission Productions filed an application (No. 002256378) to register the mark DR. NO with the OHIM. The goods for which registration was sought were in five different classes:

– “Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; electric and/or electronic apparatus and instruments (included in class 9); apparatus for recording, transmission or reproduction of sound and/or images and/or electronic data; magnetic data‑carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire‑extinguishing apparatus; data carriers of all types containing programs, software programs, recorded sound carriers, recorded image and sound carriers”, in Class 9;
– “Vehicles; apparatus for locomotion by land, air or water”, in Class 12;
– ‘”Leather and imitations of leather, and goods made of these materials (included in class 18); animal skins; trunks and travelling bags; luggage; umbrellas, parasols and walking sticks; whips, harness and saddlery”, in Class 18;
– “Clothing, footwear, headgear”, in Class 25;
– “Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages”, in Class 32.

Danjaq filed an opposition on April 26, 2002 arguing a likelihood of confusion with its earlier unregistered mark DR. NO used in connection with the James Bond film the same name.

The OHIM’s Opposition Division rejected that opposition on September 28, 2004, holding that Danjaq had not proven that the DR.NO Mark was well-known or had been used as a mark in commerce. Danjaq filed a notice of appeal of the Division’s decision, but the Board of Appeal dismissed the appeal on September 21, 2005, and affirmed the Division’s position.

Danjaq appealed the decision to the Court of First Instance. On June 30, 2009, the Court of First Instance affirmed the decisions below.

The primary issue was whether Danjaq, in promoting the first James Bond film “Dr. No,” had used the mark DR. NO as a trademark prior to the filing date of Mission Productions’ application.

The court found that Danjaq had not:

[I]n the present case, an examination of the documents submitted by the applicant shows that the signs Dr. No and Dr. NO do not indicate the commercial origin of the films, but rather their artistic origin. For the average consumer, the signs in question, affixed to the covers of the video cassettes or to the DVDs, help to distinguish that film from other films in the ‘James Bond’ series. The commercial origin of the film is indicated by other signs, such as ‘007’ or ‘James Bond’, which are affixed to the covers of the video cassettes or to the DVDs, and which show that its commercial origin is the company producing the films in the ‘James Bond’ series. Moreover, even if the profits that the film Dr. No had generated within the Community are capable of showing the commercial success of the film in that territory, the fact remains that they cannot show that the signs in question are used as indicators of commercial origin.

In addressing Danjaq’s use of DR.NO on comic books, music recording, books and posters, the court stated the following:

In the case of comic books, music recordings, books and posters, the signs Dr. No and Dr. NO are likewise not used as trade marks, but as a reference which is descriptive of the goods, indicating to consumers that they are music from the film Dr. No, a book or a comic book about the character of ‘Dr. No’, or a poster of that film or character. As is apparent from examining the documentation supplied by the applicant, some of the goods referred to are marketed to the public under other indicators of origin, namely ‘007’ and ‘James Bond’, which indicate to consumers that the commercial origin of the abovementioned goods relating to the film or the character of ‘Dr. No’ is the same as that of the films in the ‘James Bond’ series.

Danjaq also was not able to prove that any of the items that they claimed evidenced use of DR. NO as a mark had been put on the European market before the filing date of Mission Productions’ application.

Because the DR. NO mark could not be established by Danjaq as having been used as a source identifier, the court did not regarding them as having been well-known trademarks in any EU Member State within the meaning of Article 8(2)(c) of Regulation No 40/94 and Article 6 bis of the Paris Convention.

Finally, Danjaq tried to make the argument that Danjaq’s DR. NO title could still serve as grounds to oppose registration of the confusingly similar mark by Mission Productions. Under Article 8(4) of Regulation No 40/94, the existence of an earlier non‑registered trade mark or a sign other than a trade mark gives good grounds for opposition if the sign satisfies the following conditions: it is used in the course of trade; it is of more than mere local significance; it confers on its proprietor the right to prohibit the use of a subsequent trade mark; rights to the sign in question were acquired, pursuant to the law of the Member State in which the sign was used, prior to the date of application for registration of the Community trade mark

Unfortunately for Danjaq, the court found that the company had not provided sufficient evidence to show use of the title DR. NO in the two markets of the European Union (specifically, Sweden and Germany) which provide some protection for film titles (beyond copyright protection) against registration of a trademark which gives rise to a likelihood of confusion with such titles.

With Danjaq not able to satisfy one of the criteria under Article 8(4) of Regulation No 40/94, it could not rely upon the provision to sustain an opposition against Mission Productions’ application.

Sidenote: Do you think Danjaq is aware of this pending USPTO application for the mark DR. NO filed by Medical Research Institute for “Nutritional and Dietary Supplements”?

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