Feeds

No Dr No rights for Bond owners

EU court does not find trade mark sufficiently suave

SANS - Survey on application security programs

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.

High performance access to file storage

More from The Register

next story
Android engineer: We DIDN'T copy Apple OR follow Samsung's orders
Veep testifies for Samsung during Apple patent trial
MtGox chief Karpelès refuses to come to US for g-men's grilling
Bitcoin baron says he needs another lawyer for FinCEN chat
Did a date calculation bug just cost hard-up Co-op Bank £110m?
And just when Brit banking org needs £400m to stay afloat
One year on: diplomatic fail as Chinese APT gangs get back to work
Mandiant says past 12 months shows Beijing won't call off its hackers
Don't let no-hire pact suit witnesses call Steve Jobs a bullyboy, plead Apple and Google
'Irrelevant' character evidence should be excluded – lawyers
EFF: Feds plan to put 52 MILLION FACES into recognition database
System would identify faces as part of biometrics collection
Ex-Tony Blair adviser is new top boss at UK spy-hive GCHQ
Robert Hannigan to replace Sir Iain Lobban in the autumn
Alphadex fires back at British Gas with overcharging allegation
Brit colo outfit says it paid for 347KVA, has been charged for 1940KVA
Jack the RIPA: Blighty cops ignore law, retain innocents' comms data
Prime minister: Nothing to see here, go about your business
Singapore decides 'three strikes' laws are too intrusive
When even a prurient island nation thinks an idea is dodgy it has problems
prev story

Whitepapers

Designing a defence for mobile apps
In this whitepaper learn the various considerations for defending mobile applications; from the mobile application architecture itself to the myriad testing technologies needed to properly assess mobile applications risk.
3 Big data security analytics techniques
Applying these Big Data security analytics techniques can help you make your business safer by detecting attacks early, before significant damage is done.
Five 3D headsets to be won!
We were so impressed by the Durovis Dive headset we’ve asked the company to give some away to Reg readers.
The benefits of software based PBX
Why you should break free from your proprietary PBX and how to leverage your existing server hardware.
Securing web applications made simple and scalable
In this whitepaper learn how automated security testing can provide a simple and scalable way to protect your web applications.