Back in February, a number of the “James Bond” UK and EU trade marks, owned by Danjaq LLC, were challenged based on alleged non-use. Danjaq has now reportedly filed its evidence in response to the EU proceedings. So, what does this mean for the future of these marks?
Under section 46 of the Trade Marks Act 1994 (“TMA”), a third party can apply to revoke the registration of a UK trade mark if the mark has not been actively used for an uninterrupted period of 5 years. It can also be revoked if, after 5 years of being registered, the mark was never put to genuine use. However, a trade mark holder would be able to rely on some exemptions here, for example if it can show there were proper reasons for non-use (which are reasons falling outside the control of the holder, such as export or legal restrictions). The revocation application can also be discarded if the holder resumed / commenced use of the mark after the expiry of the 5 year period, but at least 3 months before the revocation application was made (provided the holder had no knowledge that the application might be made).
Trade marks can be registered in up to 45 classes (with 34 classes covering goods and 11 covering services) for a range of goods and services, and many of the “James Bond” trade marks are, unsurprisingly, registered in respect of services such as film production and the provision of movies and multimedia entertainment content. However, these marks are also registered for other goods such as household utensils, beers and soaps, which it is fair to say are not commonly associated with the film franchise.
Danjaq will now need to provide evidence showing genuine use of the trade marks in the UK and EU. If it is unable to, its “James Bond” trade marks will be revoked for the affected goods and services. So, assuming a worst-case scenario for Danjaq, it is quite possible that the trade marks will be partially revoked. This could, at least in theory, open the door to third party applications for “James Bond” for the affected goods and services. All is not lost, however, as if a third party was to actually apply for / use “James Bond” for the affected goods and services, Danjaq would almost certainly challenge such application / use on the basis of its prior rights. Due to Danjaq’s reputation in the UK, under section 10(3) of the TMA, it would be considered trade mark infringement if a third party used Danjaq’s marks, provided this use took unfair advantage of, or was detrimental to the distinctive character of the marks. Danjaq could also rely on the tort of passing off, which would prevent a third party from “passing off” its goods and services as belonging to the company.
It would seem then that Danjaq would have a few options if it did lose some of its marks, meaning they may not have to die another day.
For further information please contact Victoria Wallace