The Court of First Instance (CFI) has dismissed Danjaq’s action against Mission Productions to block the registration of the word sign “Dr. No” as a Community trade mark. The CFI dismissed this action because Danjaq had failed to establish that the word signs “Dr. No” and “Dr. NO” were used as trade marks or that the title of the film “Dr. No” was used in the course of trade.
In 2001, Mission Productions, a media company based in Germany, applied to the Office of Harmonization for the Internal Market (OHIM) to register the word sign “Dr. No” as a Community trade mark. Danjaq, a U.S. company that manages the intellectual property rights to the “James Bond” films, opposed this registration, arguing that (i) it would be confused with its earlier and already well known marks and (ii) these earlier word signs are non-registered marks used in the course of trade. OHIM rejected Danjaq’s claim, finding that it had failed to provide sufficient evidence to prove its arguments. Danjaq appealed against this decision to the CFI.
The CFI agreed with OHIM’s analysis. The Court noted that the purpose of a trade mark is to identify the commercial origin of particular set of goods or services. It then found that the word signs “Dr. No” and “Dr. NO” do not serve this purpose, but instead help differentiate that film from other films in the ”James Bond” series. Finally, the CFI noted that, although copyright protection cannot be relied upon in trade mark opposition proceedings, it may be used in later proceedings seeking to declare a registered Community trade mark invalid.