FROM RUSSIA WITH LOVE opposition fails

United Kingdom
In In the matter of Application 2387842 by Fabergé Ltd (Case BL O-173-09, June 23 2009), a hearing officer of the UK Intellectual Property Office has rejected an opposition brought by Danjaq LLC, the owner of the rights in the James Bond films, against Fabergé Ltd’s application for the registration of the mark FROM RUSSIA WITH LOVE. 

On March 24 2005 Fabergé applied to register the mark FROM RUSSIA WITH LOVE for watches and jewellery. Danjaq opposed the application under Sections 5(2)(a), 5(3) and 5(4)(a) of the Trademarks Act 1994.

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

With regard to the Section 5(4)(a) claim, the hearing officer held that goodwill for Danjaq’s production and distribution business was 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 to extend only to licensing use in relation to watches. There was evidence of sales of Swatch watches bearing the mark FROM RUSSIA WITH LOVE within the United Kingdom before the date of Fabergé’s application. However, there were no specific UK sales figures for the other goods under consideration.

Addressing misrepresentation, the hearing officer found that although the phrase 'from Russia with love' could be descriptive, the public would perceive the mark FROM RUSSIA WITH LOVE as a reference to the film. However, the hearing officer also found that a reference to the film was not the same as the mark representing to the public that the goods were licensed. 

The hearing officer noted that the Swatch watches were marketed in conjunction with other James 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 would indicate licensing from Danjaq absent such additional signage. Members of the public unaware of the Swatch watches would know that the film From Russia with Love was an old film, and it would appear strange that film merchandising was still being produced. There would again be no indication of licensing from Danjaq, and thus no misrepresentation.

In addition, the hearing officer quickly dismissed the Section 5(2)(a) claim because “from an initial analysis, [he could] see no similarity between the goods at issue". The hearing officer also found that "the nature, purpose and method of use [of the goods] are all different”. In response to the argument that any degree of similarity was sufficient, the hearing officer stated that this was no more than "clutching at straws".

Finally, the hearing officer dismissed the Section 5(3) claim 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. Therefore, the mark could not have a reputation for such goods at the material date. 
 
Arguably, Danjaq shot itself in the foot by failing to provide details of sales of many of the goods that it sought to rely upon - and, for those that it did, by failing to provide separate data relating to UK sales. The consumer survey evidence submitted by Danjaq was entirely disregarded, as the latter gave no evidence about the methodology of the survey itself. However, by far the greatest obstacle in Danjaq’s path was the fact that it had not sought adequate protection for its valuable intellectual property.
 
Robert Lundie Smith, McDermott Will & Emery UK LLP, London

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