In Danjaq LLC v OHIM T-435/05 30 June 2009 (unreported) the Court of First Instance (CFI) upheld a decision of the Board of Appeal of Office of Harmonization for the Internal Market (OHIM) that a film title is an indicator of artistic, but not commercial, origin and, as such, is not a trade mark.
In June 2001, Mission Productions Gesellschaft für Film-, Fernseh- und Veranstaltungsproduktion filed a trade mark application with OHIM for the word mark Dr. No for a wide range of goods.
Danjaq LLC, which owns the intellectual property associated with James Bond, filed an opposition based on its earlier, allegedly well known, unregistered marks Dr. No and Dr. NO based on their use in the course of trade on films, DVDs and associated merchandise. OHIM rejected the opposition and an appeal to OHIM’s Board of Appeal was dismissed. Danjaq appealed to the CFI
In assessing whether the unregistered marks Dr. No and Dr. NO were well known trade marks, the CFI considered whether these marks had been used by Danjaq prior to the date of Mission Production’s application. The Court found that they had not:
… the signs … 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’ …
The CFI applied the same logic to Dr. No merchandise.
It followed that the signs could not be well known marks within the meaning of Article 8(2)(c) of Regulation No 40/94 and Article 6 bis of the Paris Convention. It was therefore not necessary to determine whether or not there was any likelihood of confusion. Danjaq also argued that the signs Dr. No and Dr. NO are protected, as distinctive titles of a film pursuant to Article 8(4) of the Regulation and under national laws of Member States that protect the titles of artistic works against the use of a subsequent mark. Sweden and Germany were identified as Member States conferring such protection. However, the Court determined that Danjaq had failed to establish the use of the title of the film Dr. No in the course of trade in Germany and Sweden before the date of Mission Production’s application, which could, according to the Court, have been done “without too much difficulty”.
The action was therefore dismissed in its entirety.