CFI says no to DR NO opposition

European Union
In Danjaq LLC v Office for Harmonization in the Internal Market (OHIM) (Case T-435/05, June 30 2009), the Court of First Instance (CFI) has dismissed Danjaq LLC's opposition against the registration of the trademark DR NO.
In 2001 German company Mission Productions Gesellchaft für Film-, Fernseh-, und Veranstaltungsproduktion mbH sought to register the mark DR NO as a Community trademark for various goods, including recording discs in Class 9, vehicles in Class 12, luggage in Class 18, clothing in Class 25 and beer in Class 32 of the Nice Classification.

Dr No is the title of the first film in the James Bond series and the name of one of the main characters in the film. US company Danjaq, which manages the IP rights in the James Bond series, filed an opposition against the application, relying on its rights in the terms 'Dr No' and 'Dr NO', which it used in the course of trade to designate films, DVDs, videos, comic books, music recordings, books, posters and action figures for the purposes of Article 8(4) of the Community Trademark Regulation (207/2009). Danjaq claimed that there was a likelihood of confusion between Mission's mark and its well-known DR NO marks.
OHIM rejected the opposition, holding that Danjaq had failed to prove that:

  • the marks in question were well known; and
  • its unregistered DR NO marks had previously been used in the course of trade.
The Board of Appeal of OHIM dismissed Danjaq's appeal. Danjaq appealed to the CFI.
The court pointed out that the essential function of a trademark is to identify the commercial origin of goods or services. It noted that Danjaq's signs 'Dr No' and 'Dr NO' did not indicate the commercial origin of the films, but rather their artistic origin. The signs affixed to the covers of the video cassettes or to the DVDs helped to distinguish the film Dr No from other films of the James Bond series. The commercial origin of the film is indicated by other signs, such as '007' or 'James Bond'. Moreover, the CFI held that use of the signs for all other goods was merely descriptive, indicating to consumers that those goods related to the Dr No film or the character of Dr No. Therefore, the CFI concluded that the signs 'Dr No' and 'Dr NO':

  • were not used as trademarks; and
  • did not enjoy protection under Articles 8(2)(c) or 8(4) of Regulation 207/2009 (protection of well-known and unregistered trademarks).
However, the CFI conceded that titles of artistic works are protected by certain national laws against use of a similar mark. In those cases, the titles of artistic works may be regarded as "another sign used in the course of trade" for the purposes of Article 8(4) of Regulation 207/2009. The German Trademark Act and the Swedish Trademarks Regulation afford such protection against a similar trademark which gives rise to a likelihood of confusion with the titles in question, provided that such titles have distinctive character and are used in the course of trade. However, as Danjaq failed to demonstrate use of the terms 'Dr No' and 'Dr NO' in Germany and Sweden, the court did not have to determine whether the title Dr No fulfils the remaining conditions to enjoy the protection afforded to those signs by national laws.
Friederike Bahr, Beiten Burkhardt, Munich

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