Next, it should be pointed out that Dr. No is the title of the first film in the ‘James Bond’ series and also the name of one of the main characters in the film. Theoretically, those facts cannot prevent the use of the signs Dr. No and Dr. NO as trade marks in order to identify the commercial origin of the films or DVDs.

However, in the present case, an examination of the documents submitted by the applicant shows that the signs Dr. No and Dr. NO do not indicate the commercial origin of the films, but rather their artistic origin. For the average consumer, the signs in question, affixed to the covers of the video cassettes or to the DVDs, help to distinguish that film from other films in the ‘James Bond’ series. The commercial origin of the film is indicated by other signs, such as ‘007’ or ‘James Bond’, which are affixed to the covers of the video cassettes or to the DVDs, and which show that its commercial origin is the company producing the films in the ‘James Bond’ series. Moreover, even if the profits that the film Dr. No had generated within the Community are capable of showing the commercial success of the film in that territory, the fact remains that they cannot show that the signs in question are used as indicators of commercial origin.

The opponent also tried to rely on national law that protects film titles in a similar way as trademarks are being protected:

As regards the applicant’s argument that the signs Dr. No and Dr. NO are protected, as distinctive titles of a film, under Article 8(4) of Regulation No 40/94, it should be pointed out that the titles of artistic works are protected by certain national laws against the use of a subsequent mark, as distinctive signs outside the area of copyright. In those cases, the titles of artistic works may be regarded as signs other than trade marks, for the purposes of Article 8(4) of Regulation No 40/94.

However, the opponent failed to prove that the film "Dr. No" had been broadcast in a member country that affords special protection to film titles:

Since the applicant has failed to establish the use of the title of the film Dr. No in the Member States in which it is protected against the use of a subsequent trade mark, it is not necessary to examine whether that title fulfils the remaining conditions in order to enjoy the protection afforded to those signs by national laws. Consequently, the third plea must be rejected and, accordingly, the action must be dismissed in its entirety.

Full text of judgment of 30 June 2009

Correction: in a first version of this post, the names of applicant and opponent were confused.