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On May 27, The Guardian published an article highlighting the challenges currently facing the owners of the James Bond franchise. The rights holders have requested additional time to defend themselves against legal actions filed by Josef Kleindienst, a Dubai-based property developer. In February, Kleindienst initiated proceedings in both the UK and the EU, arguing that the lack of recent use of certain James Bond related trademarks (including the character’s name, the “007” designation, and the iconic catchphrase “Bond, James Bond”) has led to the lapse of their legal protection.
Danjaq, a US-based company that controls the global merchandising rights to James Bond in partnership with the UK-based production company Eon, was initially granted 60 days to respond to the trademark challenges. While the company has submitted its defence in the UK, it has requested more time to file in the EU. The EU Intellectual Property Office (EUIPO) responded that, “as a general rule, any initial unilateral request for an extension that is received in time will be considered appropriate and will be granted.” However, it added that, barring “exceptional circumstances”, no further extensions beyond mid-June will be permitted.
The article highlights the growing tension between Danjaq and Kleindienst, who has positioned himself as a representative of public interest, arguing that fans should reclaim control over the franchise’s future. He emphasises that “Daniel Craig’s last outing as 007, No Time to Die, was released in 2021,” and with no confirmed successor or timeline for a new instalment, the franchise risks surpassing the previous gap of six years and four months between films. Kleindienst uses this inactivity to bolster his claim that the trademarks have not been genuinely exploited.
This situation serves as a strong reminder of the legal implications of the “non-use” principle in trademark law. To better understand its importance, this article will examine the James Bond case as a practical example to explore the mechanics and consequences of non-use in intellectual property rights.
Legal framework:
Under both UK and EU trademark law, a registered trademark can be revoked if it has not been put to genuine use in the relevant territory for a continuous period of five years, unless there are valid reasons for non-use. The burden of proof lies with the trademark owner to demonstrate such use.
In the UK, revocation for non-use allows for the removal of a trademark from the register if it has not been used within five years of registration, or for any uninterrupted five-year period thereafter. The application for revocation may target the entire registration or only the goods and/or services that have not been used.
Similarly, under article 58(1)(a) of the European Union Trademark Regulation (EUTMR), an EU trademark (EUTM) is subject to revocation if it has not been genuinely used in the Union for a continuous five-year period following registration, as defined by article 18 EUTMR. According to article 58(2), revocation may also be partial, affecting only those goods or services for which the mark has not been used.
In both systems, third parties may request cancellation if the trademark owner fails to prove genuine use for the relevant goods or services. Genuine use must be commercial in nature, not merely symbolic, and must create or maintain a market presence by establishing a clear link in the minds of consumers between the mark and the goods or services offered.
The James Bond case:
As previously noted, Danjaq has submitted its defence to the UK Intellectual Property Office (UKIPO) and requested an extension to file its response with the EUIPO. This situation highlights the critical importance for trademark owners to actively use their marks across all registered classes to avoid the risk of non-use cancellation.
For long-standing franchises such as James Bond, it is essential to maintain thorough records demonstrating genuine commercial use of the marks. Trademarks represent valuable strategic assets in a highly competitive market, and owners should routinely audit their portfolios to ensure continued use across all relevant goods and services. Where certain classes are no longer in use, it may be advisable to either refile with a more accurate scope or voluntarily surrender unused classes to reduce exposure to legal challenges.
Conclusion:
The James Bond trademark dispute stands as a cautionary example for rights holders, underscoring the importance of proactive trademark management and the legal vulnerabilities associated with non-use. As the proceedings continue, they are likely to offer valuable insights into how non-use provisions are enforced and what defences remain available to trademark owners. For now, all that remains is to await the outcome, and hope that the legacy of James Bond remains safeguarded by those best equipped to uphold it.
