In BL O-173-09 Fabergé Ltd’s application (Danjaq LLC’s opposition) 23 June 2009, a hearing officer of the UK Intellectual Property Office rejected an opposition brought by the owners of the rights in the Bond films, Danjaq LLC, against Fabergé’s application of 24 March 2005, to register FROM RUSSIA WITH LOVE in relation to watches and jewellery. Danjaq had opposed registration under Section 5(2)(a) Section 5(3) and Section 5(4)(a) of the Trade Marks Act 1994 (the Act).

Although Danjaq is the co-owner of copyright in 21 of the James Bond films, it only sought trade mark protection for the titles of the Bond films (for a wide range of goods) on 29 December 2005 (post Fabergé’s application). The only registered trade mark of relevance to the opposition was Danjaq’s Community trade Mark (CTM) 004333308 FROM RUSSIA WITH LOVE, registered in relation to computer games, software and related items.

SECTION 5(4)(A): PASSING OFF

Goodwill for Danjaq’s production and distribution business was found to be associated with both the James Bond name and the titles of the individual films. In relation to other goods/services, due mainly to the evidence (or lack thereof) before the hearing officer, goodwill was found only to extend to licensing use in relation to watches. There was evidence to show sales of Swatch watches within the United Kingdom bearing the mark FROM RUSSIA WITH LOVE before the date of Fabergé’s application, but for other goods under consideration there were no specific UK sales figures.

When addressing misrepresentation, the hearing officer found that, although the words could be descriptive, the common reaction when encountering the sign FROM RUSSIA WITH LOVE would be as a reference to the film. However, he also found that a reference to the film is not the same as the sign representing to the public that the goods are licensed.

The hearing officer noted that the Swatch watches were marketed in conjunction with other Bond signage. For those members of the public who were aware of these watches, there would be no belief that use of FROM RUSSIA WITH LOVE absent such additional signage would indicate licensing from Danjaq. Members of the public unaware of the Swatch watches would know that the film FROM RUSSIA WITH LOVE was an old film and it may appear strange that film merchandising was still being produced. There would again be no indication of licensing from Danjaq and no misrepresentation.

SECTION 5(2)(A): EARLIER MARK

Relying upon their earlier CTM, Danjaq opposed registration under Section (2)(a). The hearing officer quickly dismissed this attack because “from an initial analysis [he could] see no similarity between the goods at issue. The nature, purpose and method of use are all different.” In response to the argument that any degree of similarity was good enough, the hearing officer stated that this was no more than clutching at straws.

SECTION 5(2)(A): WELL KNOWN MARK UNDER THE PARIS CONVENTION

The hearing officer was of the opinion that he only needed to address this matter in relation to watches. This ground failed as the volume of sales were found to be too low.

SECTION 5(3): REPUTATION

The hearing officer also dismissed this swiftly. There was no evidence of use of Danjaq’s CTM in relation to the goods for which it was registered until after the date of Fabergé’s application. The mark therefore could not have a reputation for such goods at the material date.

COMMENT

What is clear is that Danjaq shot themselves in the foot by failing to provide details of sales of many of the goods they were trying to rely upon and, for those that they did, by failing to separate data relating to UK sales from worldwide sales. Their consumer survey evidence was entirely disregarded, as they gave no evidence about the methodology of the survey itself. However, by far the greatest obstacle in Danjaq’s path was the fact that they had not sought adequate protection for their valuable intellectual property.