1. Placing the words “Dr. No.” on a videocassette does not constitute use as a trademark
CFI, ruling of 30.06.2009 - T-435/05 (HABM) (Dr. No)
The defendant applied in 2001 to register the word mark “Dr. No” as a Community trademark. The applicant filed notice of opposition. In its view, there was a risk of confusion with an older and notorious mark. It claimed that “Dr. No” is primarily used in commerce to identify media.
The opposition and appeal failed.. The application to the CFI also failed.
The CFI first held that the material function of a mark is to identify the commercial origin of a good or service. Consumers in particular should be given the opportunity to identify a product directly which they had had good experience with. “Dr. No” by contrast is the title of the first James Bond film and the name of the protagonist. However, this name does not by itself show the commercial origin of the film, but merely its “artistic origin”. The commercial origin is shown more by the numbers “007” or “James Bond”. The profit made by the film “Dr. No” also does not establish use as trademark.
The court further notes that the distinction between brand and title is neither arbitrary nor remote from reality. One and the same mark can be a work in the sense of copyright law and a statement of the commercial origin of the product. Copyright protection of a title along does not justify trademark protection. “Dr. No” is consequently “only” the title. “James Bond 007” shows the commercial origin of the products.
2. "Nivea-Blue"
OLG Hamburg, ruling of 19.11.2008 Az. 5 U 148/07
The plaintiff is the owner of the “Nivea-Blau” colour mark. The defendant is a direct competitor of the plaintiff and also distributes body hygiene products under the “Dove” brand. The defendant put numerous care products on the market, using the “Nivea-Blau” colour mark. The plaintiff felt its rights had been violated and applied for a trademark law cease-and-desist order.
The court effectively rejected the application. There is no danger of confusion. This would require the defendant to use the blue colour as an identifying characteristic. It must be taken into consideration that consumers generally do not reach a conclusion about the origin of a product solely on the basis of colour, without further information being displayed on the product.
There is also a particular need for freedom of use for the colour blue as a primary colour, particularly in the field of body care products. The plaintiff itself also weakened the identifying force of “Nivea-Blau” by using other colours.
Finally, the defendant applied its familiar word and picture brand to the products complained of, so that the colour used is pushed further into the background.
Contact:
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