IN THE MATTER OF AN OPPOSITION
by Danjaq, S.A. (now Danjaq Inc.) to applica-
tion No. 673,383 for the trade-mark 007 SUB-
MARINE & Design filed by Spiridon Zervas
and Dimitra Zervas in partnership trading as 007
On January 3, 1991, the applicant, Spiridon Zervas and Dimitra Zervas in partnership trading as 007, filed an application to register the trade-mark 007 SUBMARINE & Design. The application covers the following wares:
(1) sandwiches, submarine sandwiches, coffee, milk, tea, flavoured and unflavoured non-alcoholic uncarbonated and carbonated beverages; natural juices; mixtures of natural fruit juices,
(2) pizzas, panzerotti and pastas; napkins, table cloths [sic], sandwich and pizza wraps; novelty items, namely, pencils, buttons, calendars, thermometers; clothing, namely, hats, caps, t-shirts, sweatshirts, shorts, pants, skirts, dresses, swim suits [sic], sweatpants, socks, scarves, ties
and the following services:
(1) restaurant services, namely selling of submarine sandwiches,
(2) restaurant catering services, namely, the selling of pizzas, panzerotti and pastas.
The application is based on use of the mark in Canada since July 15, 1989 in association with the wares and services marked (1) and on proposed use in association with the wares and services marked (2). The application was amended to include a disclaimer to the word SUBMARINE and was advertised for opposition purposes on January 1, 1992.
The opponent, Danjaq, S.A. (now Danjaq Inc.), filed a statement of opposition on April 27, 1992, a copy of which was forwarded to the applicant on June 2, 1992. The first ground of opposition is that the applicant is not the person entitled to registration pursuant to Sections 16(1) and 16(3) of the Trade-marks Act because, as of the applicant’s claimed date of first use and its filing date, the applied for trade-mark was confusing with the trade-marks 007, JAMES BOND 007, BOND 007, JAMES BOND and JAMES BOND 007 & Gun Design previously used or made known in Canada by the opponent and/or its predecessors in title in association with
motion picture films, video cassettes of motion picture films and the services of entertainment by means of motion picture films and the rental of video cassettes of motion picture films.
The second ground of opposition is that the applicant’s trade-mark is not distinctive because it does not distinguish the applicant’s wares and services “...from the wares and services of the Opponent or others in Canada, nor is it adapted to distinguish such wares and services.”
The applicant filed and served a counter statement. The opponent’s evidence comprises the affidavits of Adrienne Blanchard, David Stephen Pope and Lawrence E. Abelman. As its evidence, the applicant filed the affidavits of Spiridon Zervas, A. Grant Evans, Ruth Isard, Dagmar Howlett and Laura McFarland. As evidence in reply, the opponent filed the affidavits of Cindy Vandenakker and Shirley McDonald and a second affidavit of David Pope. Both parties filed a written argument but no oral hearing was conducted.
As for the first ground of opposition, Sections 16(1), 16(3) and 16(5) of the Act require the opponent to evidence use or making known of its trade-marks prior to the applicant's filing date and the applicant’s claimed date of first use and to evidence non-abandonment of those marks as of the applicant's advertisement date. In his first affidavit, Mr. Pope identifies himself as the Executive Legal Officer of the opponent and states that the opponent is the owner of the five trade-marks relied on which he states are based on the fictional character James Bond created by the novelist Ian Fleming. Mr. Pope also states that the opponent is a joint owner (with United Artists Corporation) of copyright in a series of fifteen motion pictures based on the Bond character beginning with From Russia With Love in 1963 and ending with Licence To Kill in 1989. He states that these motion pictures were exhibited and telecast in Canada and that videotapes of these films have been released in Canada as well.
Mr. Pope states that the public recognition of the Bond character and the opponent’s trade-marks is widespread. However, he has not clearly evidenced use of any of his company’s marks in Canada prior to the applicant’s claimed date of first use or the applicant’s filing date. Exhibit C to the first Pope affidavit appears to be a computer printout of excerpts from newspaper and magazine articles which refer to one or more of the opponent’s motion pictures. However, Mr. Pope did not indicate who conducted the computer search or how and when it was conducted. Furthermore, there is no indication that any of the publications searched had any circulation in Canada. More importantly, any references to the opponent’s trade-marks in those excerpts do not constitute use of the marks by the opponent for the wares and services claimed in the statement of opposition.
Exhibit D to the first Pope affidavit comprises a photocopy of the May 13, 1987 issue of the magazine Variety and a photocopy of an article from the July 24, 1992 issue of the magazine Screen International. There is no evidence that either of these magazines has any circulation in Canada. Furthermore, the materials appended as Exhibit D do not evidence any use of the opponent’s trade-marks by the opponent for the wares and services claimed. Finally, the second publication evidenced is dated subsequent to both the applicant’s filing date and its claimed date of first use and therefore cannot be used to establish prior use of any of the opponent’s trade-marks.
Exhibit B to the first Pope affidavit comprises examples of publicity material for “...the two latest Bond movies The Living Daylights and Licence To Kill.” The single page poster for the former movie features the trade-marks 007 and JAMES BOND 007 & Design but the only companies identified on the poster are United Artists and MGM/UA Distribution Co. The publicity kit for the latter movie also features those marks and it identifies both the opponent and United Artists Company. However, Mr. Pope gives no indication as to the circulation of these materials. In particular, there is no evidence that these materials were ever distributed in Canada.
In summary, Mr. Pope’s first affidavit fails to evidence any use of the opponent’s marks in Canada by the opponent for the claimed wares and services. It is apparent that the various Bond movies were exhibited in Canada and that the videotapes of the movies have been available for rental in Canada as well. Presumably, those movies make reference to the fictional character James Bond and his moniker 007. However, there is no admissible evidence
showing the use of those names as trade-marks by the opponent for the wares and services claimed.
The opponent also relied on the Blanchard affidavit to establish prior use of its marks. Ms. Blanchard examined three issues of the magazine People, one issue of the magazine Variety and one issue of the newspaper The Christian Science Monitor which contained articles referring to 007. She appended circulation figures for these publications which she obtained from the Audit Bureau of Circulations. In the hands of Ms. Blanchard, those figures are hearsay and can be given little weight. I am prepared to take judicial notice, however, that People is circulated in Canada and that at least some Canadians would have read the articles excerpted by Ms. Blanchard. But those articles do not evidence prior use of the opponent’s trade-marks by the opponent in Canada. They simply make reference to the character James Bond or 007.
In her affidavit, Ms. Blanchard also states that on February 2, 1993 she visited a number of video rental stores in Ottawa and noted that each of them carried a number of James Bond films. However, Ms. Blanchard did not provide particulars of the videotapes she examined. Thus, I am unable to determine if any of those videotapes bore one or more of the opponent’s trade-marks and if they showed the opponent as the source of the goods. In any event, the fact that James Bond films were available for rental in 1993 would not establish use of any marks appearing on the videocassettes prior to the applicant’s filing date and claimed date of first use. Even if the evidence had shown the availability of those films for rental prior to the material times, it would appear that any rental services performed would have been by the video rental stores and not by the opponent.
The opponent also sought to rely on the Vandenakker affidavit to show prior use of its trade-marks. Ms. Vandenakker rented fifteen James Bond movies sometime shortly prior to January 27, 1994 and photocopies of the videocassette jackets for each film are appended as exhibits to her affidavit. However, the Vandenakker affidavit was submitted as reply evidence and can only be admitted insofar as it answers the doubts raised by the affidavit of A. Grant Evans as to the ownership of the copyright in the various James Bond films. Rule 45 states that reply evidence must be “...strictly confined to matter in reply....” Thus, the Vandenakker affidavit cannot be admitted to show use of the opponent’s various trade-marks. Even if it could be admitted for that purpose, it would not satisfy the opponent’s evidential burden since Ms. Vandenakker rented the movies well past the applicant’s filing date and claimed date of first use. Furthermore, a review of the videocassette jackets reveals that it is unclear who, if anyone, is using the trade-marks relied on such as JAMES BOND and 007. The jackets typically have a copyright notice referring to Danjaq, S.A. but they also bear references to other companies such as CBS/Fox Video, MGM/UA Entertainment Co., United Artists Corporation, Twentieth Century-Fox Film Corporation, etc. Thus, it would be difficult to determine who the average consumer would view as being the user of the JAMES BOND and 007 trade-marks if he, in fact, would perceive them being used as trade-marks at all.
The opponent also sought to rely on the second Pope affidavit to show prior use of its marks. However, the Pope affidavit was submitted as reply evidence and as such cannot be relied on to evidence that which should have been established by the opponent’s evidence in chief. In any event, the second Pope affidavit does not evidence any use of the opponent’s trade-marks by the opponent in Canada prior to the material times for the wares and services claimed.
As for the opponent’s allegation of prior making known of its trade-marks, Section 5 of the Act dictates what is required to show that a trade-mark has been made known. Section 5 reads as follows:
A trademark is deemed to be made known in Canada by a
person only if it is used by that person in a country of the
Union, other than Canada, in association with wares or
services, and
(a) the wares are distributed in association with it in
Canada, or
(b) the wares or services are advertised in association
with it in
(i) any printed publication circulated in Canada
in the ordinary course of commerce among
potential dealers in or users of the wares or
services, or
(ii) radio broadcasts ordinarily received in
Canada by potential dealers in or users of the
wares or services,
and it has become well known in Canada by reason of the
distribution or advertising.
The opponent’s evidence fails to evidence distribution in Canada of its trade-marked wares prior to the material times and it fails to evidence any radio, television or print advertising featuring the opponent’s marks received or circulated in Canada prior to the material times. References to a trade-mark in a magazine or newspaper article do not qualify under Section 5. In any event, even if some of the opponent’s evidence could somehow have been characterized as qualifying under Section 5, it would have been far from sufficient to show that the opponent’s marks had become well known in Canada as of the applicant’s filing date or claimed date of first use.
The net effect of the foregoing is that the opponent has failed to evidence use or making known of any of its marks by itself in Canada for the claimed wares and services prior to the applicant’s filing date and claimed date of first use. The first ground of opposition is therefore unsuccessful.
Even if the opponent’s evidence could somehow be characterized as satisfying the opponent’s evidential burden, the first ground would still have been unsuccessful since the marks at issue are, in my view, not confusing. Although the most relevant of the opponent’s marks (i.e. - 007) is identical to the most distinctive component of the applicant’s mark, the applicant’s wares, services and trades are completely different from those of the opponent. The opponent submitted that it is common in the movie industry to licence movie-related trade-marks and characters for a wide variety of wares and services. However, the opponent failed to file evidence in support of this submission. In passing, it should be noted that the applicant’s state of the register evidence introduced by the Isard affidavit would have had no
effect on the outcome of this case. Ms. Isard was only able to evidence one third party registration for a trade-mark including the numerals 007.
As for the second ground of opposition, it was stated only in general terms and must therefore be restricted to the allegations respecting the first ground, namely that the applicant’s mark is not distinctive because it is confusing with the opponent’s trade-marks. As noted above, the opponent’s evidence does not show use of the trade-marks JAMES BOND, 007, etc. by the opponent in Canada in association with the wares and services relied on. Thus, the second ground is unsuccessful. As before, even if the evidence could be viewed as establishing use of the opponent’s marks as claimed, the applicant’s mark is not confusing with any of those marks due to the wide disparity in the wares, services and trades of the parties. Furthermore, even if the opponent’s second ground had been pleaded in broader terms to also include reliance on any acquired reputation for the terms JAMES BOND, BOND 007, 007 etc. whether used as trade-marks on not, it would still have been unsuccessful due to the differences in the wares, services and trades of the parties.
In view of the above, I reject the opponent's opposition.
DATED AT HULL, QUEBEC, THIS 23rd DAY OF FEBRUARY, 1996.
David J. Martin,
Member,
Trade Marks Opposition Board.