Federal Court Affirms Broad Protection for Strong Marks Such as 007

A recent case in the Canadian Federal Court Trial Division pitted a trade-mark applicant in the restaurant business, Spiridon Zervas & Dimitr Zervas in Partnership trading as 007 (Zervas), against Danjaq Inc (Danjaq), the owner of a strong trade-mark in the entertainment business associated with the Ian Fleming novels and the movies character James Bond. The applicant Zervas had sought to register the marks 007 and 007 PIZZA & SUBS and Design for its restaurant business. The application was opposed by Danjaq as owner of the trade-marks JAMES BOND 007 and GUN Design. Danjaq argued that the applicant was not entitled to registration on two grounds: first, because the trade-mark 007 had been previously used and made known in Canada and, secondly, that the applicant's marks were not distinctive. The Registrar rejected the opposition on the basis of the wide disparity in the wares, services and businesses of the two parties. The opponent appealed to the Federal Court of Canada. On appeal, the Court considered new evidence filed by the opponent regarding the widespread distribution of the films featuring the JAMES BOND character, available through television broadcasts and video rentals and the publicity generated by the print media. In reviewing the evidence, the Court had little difficulty in concluding that the opponent's marks were used and made known in Canada prior to the applicant's first use. Next, the Court considered whether the marks were confusing. The Court rejected the Registrar's primary focus on the differences between the wares and services as being too narrow an approach. According to the Court, the nature of the wares and services ought to be a less important factor where the opponent to the registration has a strong trade-mark. In this case, the opponent's trade-marks were strong and the Court re-stated the proposition that "the stronger the mark, the greater the ambit of the protection it will be afforded". This enhanced the likelihood of confusion, even if the parties operated in different businesses. As a result, the Court allowed the appeal and refused the applicant's applications. For a copy of the decision, Danjaq Inc. v Spiridon Zervas & Dimitr Zervas in Partnership trading as 007, see: http://decisions.fct-cf.gc.ca/fct/1997/t-939-96.html. Summary by:   Hung Nguyen