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EU court does not find trade mark sufficiently suave

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The company behind the James Bond film franchise cannot stop another company from registering 'Dr No' as a trade mark because the film title is an indication of artistic, and not commercial, origin, an EU court has said.

The Court of First Instance (CFI) in Brussels ruled on a trade mark dispute between Danjaq, the owner of the Bond franchise, and a company which had registered Dr No for goods such as bags, clothing, hats and drinks.

Mission Productions registered the trade mark in 2001 and it was opposed by Danjaq in 2002. The EU body that regulates Community Trade Marks OHIM (the Office for the Harmonisation of Internal Markets), rejected Danjaq's opposition. The case was appealed to the CFI.

Dr No, starring Sean Connery and Ursula Andress, was the first Bond film to be made, in 1962. There followed many other films featuring James Bond, and the series has become one of the most famous film franchises ever.

The case concerned two almost-identical marks, Dr No and Dr NO.

The CFI said that it first had to consider whether or not they had been used as trade marks before Mission Productions' application for registration. Danjaq said that it had used the term as a trade mark for many goods, and that they were well-known marks.

The Court said that the purpose of trade marks is to identify the commercial origin of goods to enable consumers to buy in confidence. It said that this is not what the Dr No marks did, and that their function was cultural rather than commercial.

"The signs Dr. No and Dr. NO do not indicate the commercial origin of the films, but rather their artistic origin," said the ruling. "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," it said.

The Court also rejected Danjaq's claim about what its rights and entitlements to the name Dr No were.

"Contrary to the applicant’s claim, the distinction between title and trade mark is not ‘unrealistic and artificial’," said the ruling. "The same sign may be protected as an original creative work by copyright and as an indicator of commercial origin by trade mark law. It is therefore a matter of different exclusive rights based on distinct qualities, that is to say the original nature of a creation, on the one hand, and the ability of a sign to distinguish the commercial origin of the goods and services, on the other."

"Even if the title of a film can be protected pursuant to certain national laws as an artistic creation independent of the film itself, it cannot automatically enjoy the protection afforded to indicators of commercial origin, since only signs which develop characteristic trade mark functions may enjoy that protection," it said.

The court said that the fact that the name Dr No was used in relation to goods associated with the film did not automatically make that use trade mark use.

"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," it said.

"The applicant has failed to establish that the signs Dr. No and Dr. NO were used as trade marks prior to the date of application for registration of the Community trade mark," it said.

Because it had failed the first of the three legal hurdles put in front of it, Danjaq lost the case and the Court did not consider the issue further.

"Since it has not been established that the signs Dr. No and Dr. NO were used as indicators of commercial origin before the Community trade mark application was filed, they cannot be regarded as well-known trade marks," it said.

See: The ruling

Copyright © 2009, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

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