13/03/2025
The legal challenge of the James Bond trade mark continues to rumble on. Daniel Sullivan has prepared the following analysis for ‘your eyes only’.
The owners of the James Bond franchise are facing a legal challenge that could impact their control over the super spy’s legendary name. Josef Kleindienst, an Austrian businessman behind the $5 billion Heart of Europe resort project in Dubai, has filed cancellation actions in the UK and Europe, claiming that the James Bond trade mark has not been actively used across a range of goods and services. Under both UK and EU law, a trademark can be revoked if it has not been commercially exploited in specific sectors for five years.
As the owners of the Bond intellectual property portfolio, US entity Danjaq LLC, in conjunction with UK-based production company Eon, must now prepare to defend their trade mark by proving active and ongoing use. So, what do the owners of the Bond franchise need to prove to keep their iconic brand intact and emerge victorious in this legal showdown?
Proving Genuine Use of the Trade mark
At the heart of defending the trade mark in question is the requirement to demonstrate that it has been actively used. Danjaq LLC would have to show that it has been used in relation to all the goods and/or services for which it is registered. Mere partial use may not be sufficient to maintain the registration across the full range of covered goods and services.
The time period in which the use must be shown is also slightly different under EU and UK practice. However, as long as the owners could show, via evidence, that it had used the trade mark during the five years prior to the cancelation action being filed, this would be sufficient to uphold the claim.
Additionally, the use would not have to stem directly from the owner – third party use with the owner’s consent would also be considered, as would use under licence.
Defining “Genuine Use”
It’s not enough for a trademark to simply be used — it must be used “genuinely”. There are a number of factors that the trade mark offices will consider when assessing whether the use made of the mark is genuine. As a general rule, use that shows commercial activity under the mark (sales figures and associated data, invoices, advertising material as it appears on the market etc) is ideal, but genuine use can be shown via other types of evidence as well (press articles, details of any awards / industry recognition etc.).
The use would also have to have taken place in the country where the mark is registered. In the case of the EU trade mark, provided that it is genuine, use in one of the Member States of the EU is generally considered sufficient, due to the unitary nature of the common market.
Moreover, if the mark has not been put to genuine use during the relevant time period the trade mark owner would also have the opportunity to argue that there have been proper reasons for non-use. The criteria on what constitutes ‘proper reasons’ are strict and again would require evidential support, so this is usually the last resort of the trade mark owner.
Lessons Learned from Past Cases
Past cases have shown that it is extremely important to ensure that the evidence is substantial and clearly presented as possible. For example, the EUIPO famously cancelled McDonald’s “BIG MAC” trademark in 2019, despite the fact that millions of Big Mac sandwiches are sold across Europe each year. The reason? The company failed to provide sufficient evidence of genuine use.
This case serves as a warning that trademarks offices will only consider the evidence before them and will not take constructive notice of factors outside of this, even in cases where well known trade marks are concerned.
Closing thoughts
Just like James Bond’s ability to evade danger through quick thinking and execution, the franchise’s trademark owners must now act with precision to defend their brand. Without clear and convincing evidence of genuine use, even a name as legendary as Bond’s could face the risk of revocation. The lesson is clear in the world of trade marks, use it or lose it.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
