[記事掲載日：2023.1.18]
登録第6267785号商標「BOND GIRL/BGロゴ」の有効性が争われた異議申立事件に関するマークス代表・三上弁理士の記事が、世界最大の海外商標メディア「World Trademark Review (WTR)」に掲載されました。記事全文は、こちら（注意：閲覧には登録が必要です）。
The Japan Patent Office (JPO) has declared the invalidation of Registration No 6267785 for BOND GIRL with a ‘BG’ device on the ground that it was in contravention of Article 4(1)(vii) of the Trademark Law (Invalidation Case No 2022-890013, 18 November 2022).
Background
On 4 September 2019 the disputed mark, consisting of the stylized word ‘bond girl’ and a ‘BG’ logo (see below), was filed with the JPO for use on scissors, swords, hand tools, spoons, and forks in Class 8 by a Japanese business entity. The mark was registered on 9 July 2020.
The applicant has used the disputed mark on multi-tools (see here).
Invalidation petition
On 1 March 2022 Danjaq LLC, the holding company responsible for the copyright and trademarks to the characters, elements, and other material related to James Bond on screen, filed a petition for invalidation, arguing that the disputed mark was in contravention of Article 4(1)(vii) of the Trademark Law, and citing the world-famous cinematic heroine known as ‘Bond girl’ in the 007 film series.
Article 4(1)(vii)
Article 4(1)(vii) of the Trademark Law prohibits the registration of any mark likely to cause damage to public order or morality.
In the petition, Danjaq argued that the Bond girl character had appeared as a love interest in the James Bond movies for over 55 years since 1962. Due to frequent appearances in magazines, other public media, and various events pertinent to the James Bond movies, the name and sign ‘Bond girl’ had become well known as a cinematic heroine in association with the 007 film series.
It was presumed that the applicant had intentionally applied for the disputed mark with the aim of monopolizing the term. Since the applicant did not have any legal interest with Danjaq, the legitimate owner of the trademarks and copyrights pertaining to the 007 movies, it would impermissibly cause not only damage to public order and also disorder in domestic and foreign trade.
JPO decision
The Invalidation Board found, based on the produced evidence, that the cinematic heroine Bond girl had regularly attracted audiences through screenings and promotional events of the James Bond 007 movies. The sign ‘Bond girl’ had been extensively marketed and licensed to companies in vastly different product categories – not only products associated with motion pictures but also nails, cosmetics, dolls, cards, calendars, and others. The relevant consumers, when seeing the disputed mark, would perceive nothing but the cinematic heroine in the film. The board, therefore, considered that ‘Bond girl’ had become famous worldwide as a cinematic heroine that appeared in the 007 film series.
The board continued by analyzing the efforts made by Danjaq to enhance the commercial value of ‘Bond girl’ by means of trademark registrations in various jurisdictions and licensing in different product categories. The board paid attention to the fact that the applicant had referred to the James Bond films and the cinematic heroine ‘Bond girl’ in advertisements to promote the BG multi-tools.
Based on the foregoing, the board found that it was impermissible for the applicant, which was unrelated to Danjaq, to monopolize the term for the goods in question. It decided to retroactively invalidate the disputed mark under Article 4(1)(vii) for the purpose of preventing damage to public order.
