Germany: can 'Miss Moneypenny' be protected as a work title? - EU trade mark dispute: Confrasilvas

Germany: can 'Miss Moneypenny' be protected as a work title?

As many will know, Miss Moneypenny is the secretary to 'M', the head of MI6, in the James Bond films. She has appeared in 23 of the 25 films released since 1962. Following the reboot in 2006, she returned in Skyfall (2012) as the younger Eve Moneypenny. 

Danjaq LLC, which holds the exploitation rights for the Bond film franchise, has sued in Germany a company that offers secretarial and personal assistant services under the trade marks “MONEYPENNY” and “MY MONEYPENNY” as part of a franchise system. Moreover, the company's managing director has also been sued as the owner of the German word mark 'MONEYPENNY' (no. 3020151036068), an international registration for the same mark (no. 741954), and several domains containing that term.

The claimant relies on sections 5 and 15 of the German Trade Marks Act (MarkenG), which protect business identifiers and work titles as trade names. According to German case law, character names are considered protectable work titles if the public perceives them as an independent title of a main work, meaning that they cannot be used as trade marks by third parties. For instance, in the Pippi Longstocking case (LG Hamburg, ref. 308 O 431/17), the court ruled that the name qualified for protection due to its distinctive nature. The claimant is now seeking to apply that precedent to Miss Moneypenny, requesting injunctions, the withdrawal and destruction of materials and domains, the removal of the company name, disclosure and accounting of relevant information, damages and costs, and the annulment of the second defendant’s trade marks.

However, both the Regional Court of Hamburg (15 June 2023, ref. 327 O 230/21) and the Higher Regional Court of Hamburg (24 October 2024, ref. 5 U 83/23) rejected the claim. While acknowledging that a character can benefit from title protection under certain circumstances, the courts ruled that a clear profile distinct from the main work is needed. In this case, the courts considered that Miss Moneypenny lacked sufficiently defined traits because she is tied to the Bond universe and the frequent change of actresses hinders consistent public perception. Unlike characters such as Pippi or Obelix, Miss Moneypenny has not achieved the level of individualisation and separate exploitation that would establish her as a 'title' in the eyes of the public.

The case has now reached the Federal Court of Justice (BGH), which has to decide how distinct a character must be from its originating work in order to obtain title protection under sections 5 and 15 MarkenG, even in the absence of a likelihood of confusion, if there has been unfair exploitation or dilution. The court will consider factors such as the character's intensive use and independent commercial exploitation, its functional consistency despite changes of actress, and whether the public recognises “Miss Moneypenny” as an identifier independent of James Bond. The hearing took place on 25 September 2025, and the judgment is scheduled for 4 December 2025 in case I ZR 219/24.

EU trade mark dispute: Confrasilvas

On 24 September 2025, the General Court of the European Union ruled on case T-557/24 concerning the opposition to the EU trade mark 'Confrasilvas' (no. 018718047).

In June 2022, Mr Riccardo Zizioli applied to the EUIPO to register the word mark 'Confrasilvas' for services in Class 37 of the Nice Classification, which covers construction, installation, maintenance, repair and extraction. However, the Portuguese company Confrasilvas – Construções, S.A., together with its holding company, opposed the application on the basis of having used the sign 'Confrasilvas' as an unregistered trade name in several European countries (Germany, Spain, France, Hungary, Portugal and Romania) prior to this application being made. During the proceedings, the opposition was narrowed to Confrasilvas – Construções, S.A. alone, who relied exclusively on the unregistered sign. Both the Opposition Division and the EUIPO Board of Appeal rejected the opposition, on the grounds that use beyond a merely local scope had not been proven. The Portuguese company appealed to the General Court.

It should be noted that Article 8(4) of the EU Trade Mark Regulation allows opposition to be based on an unregistered sign, such as a trade name, as long as the sign is already in use in the marketplace and has significance that extends beyond a local level. In addition, the owner of the sign must have rights under the law of the Member State in which it is used, and that same law must give them the right to prohibit the later mark. These requirements must all be met, and if one is missing, the opposition cannot succeed. In practice, solid evidence of actual use, geographic reach, and recognition in trade prior to the EU trade mark filing is required.

In this sense, the General Court considered that the evidence submitted by the Portuguese company did not demonstrate its own use of the unregistered sign beyond a local level. The reports filed were those of the holding company and did not categorise information by company, country or activity. Furthermore, many photos of worksites in Portugal, Spain or France were either undated or dated after the relevant period. Other material dated from 1997 to 2009 and no contracts were produced to prove construction projects carried out by the company. As Confrasilvas – Construções, S.A. pursued the opposition alone, it could not rely on the group’s activity to demonstrate its own usage. As a result, the General Court dismissed the action.