## Facts

- Mission Productions applied in 2001 to register the word mark “Dr. No” as a Community trade mark for various goods, including clothing, footwear, and beer.
- Danjaq LLC controlled intellectual property associated with the James Bond franchise and relied on the film title and character name “Dr. No.”
- Danjaq opposed the application, asserting earlier unregistered signs “Dr. No” and “Dr. NO” used for films and related media and merchandise.
- Danjaq invoked opposition grounds under Regulation 40/94: likelihood of confusion, well-known mark status under the Paris Convention, and protection for earlier nonregistered signs used in the course of trade.
- OHIM’s Opposition Division rejected the opposition for failure to show well-known mark status or qualifying prior use in the course of trade.
- OHIM’s Board of Appeal affirmed, and Danjaq sought annulment before the Court of First Instance.

## Issues

1. Whether “Dr. No,” as used by Danjaq, functioned as a trade mark indicating commercial origin rather than merely identifying a creative work.
2. Whether Danjaq proved an earlier “sign used in the course of trade” of more than local significance that conferred a right to prohibit later use under national law (Regulation 40/94, art. 8(4)).
3. Whether “Dr. No” qualified as a well-known mark under the Paris Convention and Regulation 40/94 (art. 8(2)(c)).
4. Whether Danjaq proved qualifying use in the relevant territories before the filing date, including evidence relating to Germany and Sweden.

## Decision

- The Court of First Instance dismissed Danjaq’s action and upheld the Board of Appeal’s decision.
- The court held that “Dr. No” primarily indicated the artistic origin/identity of a particular film within the James Bond series, not the commercial origin of goods or services.
- Because the sign did not perform a trade mark function, it could not qualify as an earlier protected sign under art. 8(4) or as a well-known mark under art. 8(2)(c) and the Paris Convention.
- Danjaq also failed to prove qualifying use in the course of trade in relevant territories before the contested filing date.
- The court rejected the claim that OHIM failed to state sufficient reasons, finding the Board’s explanation adequate.

## Legal Principles

- A trade mark’s essential function is to identify commercial origin; a sign that merely identifies a creative work (such as a film title) does not automatically function as a trade mark.
- For opposition based on an unregistered sign (Regulation 40/94, art. 8(4)), the opponent must cumulatively prove: use in the course of trade, more than local significance, a national-law right to prohibit later use, and satisfaction of these conditions before the application’s filing date.
- “Use in the course of trade” requires use as an indicator of commercial origin, not merely use as a title or descriptive reference to a work, character, or theme.
- A sign that does not function as a trade mark indicating commercial origin cannot be treated as a “well-known mark” for purposes of Paris Convention art. 6bis and Regulation 40/94 art. 8(2)(c).

## Conclusion

The court allowed the “Dr. No” mark to proceed because Danjaq did not show that the film title operated as a trade mark identifying commercial origin, nor did it prove the prerequisites for protection of an earlier unregistered sign or well-known mark status, including adequate territorial and temporal evidence of qualifying trade use.


Danjaq LLC v. Off. for Harmonization in the Internal Mkt. (OHIM), Case T-435/05 (Ct. First Instance June 30, 2009)