The OHIM and Dr. No
In the Case T‑435/05 decided by the European Court of First Instance on the 30th June 2009, Danjaq LLC, a US company established in Santa Monica, California was objecting the registration of the word sign “Dr. No” as Community trade mark at the OHIM by the German company Mission Productions Gesellschaft für Film-, Fernseh- und Veranstaltungsproduktion mbH (in the following referred to as “Mission Production”).
Registration was sought for Nice Classes 9, 12, 18, 25 and 32.
The OHIM rejected Danjaq´s objection on the grounds that
- they had not provided sufficient proof that the marks in question had a well‑known character or
- that the non‑registered marks or the signs other than trade marks had previously been used in the course of trade.
Danjaq LLC based their legal action on the following grounds:
- Infringement of Article 8(1)(a) and (b) and (2)(c) of Regulation No 40/94 (identity and likelihood of confusion)
- Infringement of Article 73 of Regulation No 40/94, and of Rules 50(2)(f) and 52(1) of Commission Regulation (EC) No 2868/95 (OHIM’s obligation to state reasons on which a decision is based).
- Infringement of Article 8(4) of Regulation No 40/94 (proprietor of non-registered trademark’s right to prohibit use of subsequent trademark)
The court has declined all three pleas.
1. The court ruled that there was no infringement of Article 8(1)(a) and (b) and (2)(c) of Regulation No 40/94 as the signs “Dr. No” and “Dr. NO” were not used by Danjaq LLC as trade marks previously. The court considers “Dr. No” as the title of the first film in the “James Bond” series and the name of one of the main character in that film. The signs “Dr. No” and “Dr. NO” were however not used as trade marks in order to identify the commercial origin of the films or DVDs.
For the average consumer, these signs only help to distinguish that film from other films in the “James Bond” series. The commercial origin of the film is indicated by other signs (e.g. “007″, “James Bond” or the “Gun Symbol”).
The court further reasons that even the commercial success of the Bond film “Dr No” can not change the fact that the signs in questions are not being used as indicators of commercial origin.
2. The court ruled that there was no infringement of Article 73 of Regulation No 40/94 and of Rules 50(2)(f) and 52(1) of Commission Regulation (EC) No 2868/95 as Danjaq LLC had failed to prove that it had used the signs “Dr. No” and “Dr. NO” in the course of trade. This is sufficient ground on which OHIM could reject the plea without violating Article 73 of Regulation No 40/94 and of Rules 50(2)(f) and 52(1) of Commission Regulation (EC) No 2868/95.
3. Finally the court ruled that there was no infringement of Article 8(4) of Regulation No 40/94 as Danjaq LLC had failed to prove that it had used the signs “Dr. No” and “Dr. NO” in the course of trade. Pursuant to Article 8(4) of Regulation No 40/94, the existence of an earlier non‑registered trade mark or a sign other than a trade mark gives its proprietor the right to prohibit the use of a subsequent trade mark if the sign
- is used in the course of trade and
- is of more than mere local significance.
The court reasons that “…the condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a Community trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights…”
The documents submitted by Danjaq LLC were not sufficient proof that the film title “Dr No” was used in the course of trade as Danjaq LLC did not specify the extent of use of the title in the markets concerned. The court would have regarded “… programming details of the film, either for cinemas or television, or to specify the length of time over which the film was distributed …” as sufficient proof.
(European Court of First Instance T‑435/05, 30 June 2009)