In a recent decision by the Higher Regional Court of Hamburg (docket no. 5 U 83/23, GRUR-RR 2025, 70 – MONEYPENNY), the court dealt with the question of whether the well-known character of “007’s” assistant is “characterful” enough to enjoy protection under trademark law as a fictional character. At the same time, the judgment is a further contribution to the question of the existence of a “potential” competitive relationship under German competition law.
The recently published decision of the Higher Regional Court of Hamburg not only raises interesting legal questions, but also offers a worthwhile discussion of the fictional character “Miss Moneypenny.” It is therefore recommended not only for IP aficionados, but also for fans of the “James Bond” film series. The decision essentially focuses on two questions: (1) Is there special protection under trademark law for the character “Miss Moneypenny”? (2) Is there any competitive relationship between the owners of the rights to the films, who do not offer any goods or services under this name in Germany, and a German company that uses the name without authorization?
1. Facts of the case
The decision was based on the following facts:
A German provider of secretarial and assistance services uses the names “Moneypenny” and “My Moneypenny” for its business activities. The plaintiff, owner of the rights to the James Bond movie series, which has been running since 1962, considers this to be an infringement of its rights to this name and is asserting claims under competition and trademark law (based on a work title and a sign that has acquired public recognition).
2. Decision of the Higher Regional Court of Hamburg
The Higher Regional Court of Hamburg denied claims under competition law because the necessary competitive relationship between the parties pursuant to Section 8 (3) No. 1 German Act against Unfair Competition (“Gesetz gegen den unlauteren Wettbewerb”, UWG) in conjunction with Section 2 (1) No. 4 UWG was not established. The plaintiff had not demonstrated that it was active in the relevant business area (namely secretarial and assistant services in Germany). A merely abstract – but not yet sufficiently specific – possibility of becoming active, e.g., in the area of licensing the name “Moneypenny”, must be disregarded: a merely “potential” competitive relationship is not sufficient.
Likewise, the Higher Regional Court of Hamburg denied any trademark rights. Neither does the character “Miss Moneypenny” constitute a work title pursuant to Sections 15 (2), (3); 5 (3) of the German Trademark Act (“Markengesetz,” MarkenG), nor can this designation be regarded as a sign that has acquired public recognition pursuant to Sections 14 (2) sentence 1 no. 1, 2, (5); 4 no. 2 MarkenG.
The Higher Regional Court of Hamburg thus dismissed the action in its entirety, confirming the previous judgment of the Regional Court of Hamburg.
3. On the question of a “potential” competitive relationship
According to Section 8 (3) No. 1 UWG in conjunction with Section 2 (1) No. 4 UWG, the prerequisite for claims under competition law is a specific competitive relationship. Such a relationship can be established if parties attempt to sell similar goods or services within the same group of end consumers and therefore the competitive behavior of one party can impair that of the other, i.e., hinder or disrupt sales. The decisive factor in this respect is that the relevant business activity (at the time of the infringement) had already commenced and (at the time of the last oral hearing) had not yet been terminated; in other words, the competitor must already or still be regarded as a competitor. If this is not yet or no longer the case, however, a specific competitive relationship does not yet or no longer exist accordingly. Such a “potential” competitive relationship is not sufficient under the German Federal Court of Justice’s (“Bundesgerichtshof”, BGH) case law. Although, in the interest of effective individual protection under unfair competition law, no excessive requirements should be placed on the status of competitor, at the same time, an unlimited expansion of claims under unfair competition law is to be avoided.
The relationship between the plaintiff and the defendant fails to meet these requirements.
No impairment of its actual business activities, namely the marketing and exploitation of James Bond films, can be identified as a result of the defendant’s business activities in the field of secretarial and assistant services. On the other hand, it would be conceivable in principle that such an impairment could exist for a “licensing business” of the plaintiff, for example if it were to issue licenses for the use of the name “Moneypenny” for secretarial services. However, the plaintiff does not operate such a licensing business in Germany, or at least it has not provided any evidence of such a business. The merely abstract possibility of such a licensing business, in turn, represents only a potential and thus insufficient competitive relationship; no preparatory actions of any kind can be identified in this regard. Thus, the plaintiff’s claims under competition law fail due to the lack of a competitive relationship.
4. On trademark protection for the character “Miss Moneypenny”
The protection of fictional characters, e.g. from films or novels, has long been recognized under German Copyright Law, to which Astrid Lindgren’s character “Pippi Langstrumpf” (“Pippi Longstocking”) notably contributed in German legal history. Characters are protected within the meaning of Section 2 (1) No. 4 of the German Copyright Act (“Urheberrechtsgesetz”, UrhG) if they are distinguished by an unmistakable combination of external characteristics, character traits, abilities, and typical behaviors, and are thus formed into particularly distinctive personalities, as they appear in a specific, characteristic manner in the work from which they originate. In this respect, case law requires that an “image” or “picture” of this character has developed in a linguistically tangible, but not literal manner (BGH GRUR 2014, 258 – Pippi Longstocking Costume I).
a. No protection as a work title pursuant to Section 5 (3) of the German Trademark Act (MarkenG)
The Higher Regional Court of Hamburg applies these principles from copyright law to the protection of work titles under trademark law — without failing to recognize that the concepts of a work in copyright law (Section 2 (2) UrhG, a “work of art”) and trademark law (Section 5 (3) MarkenG) are not congruent and that the protective objective also differs (copyright protects intellectual creation as such, while the right to a work title only protects the name of the work). According to the Higher Regional Court of Hamburg, these copyright considerations therefore also, in principle, apply to protection as a work title.
However, a work title is subject to additional requirements. In principle, all intangible work results that are capable of being designated according to common opinion, i.e., that are suitable for individualizing this intellectual achievement and distinguishing it from other intellectual achievements, are eligible for protection under trademark law. In this respect, the categories of works that are generally eligible for work-title protection pursuant to Section 5 (3) of the German Trademark Act (MarkenG) are based on the catalog of works protected by copyright in Section 2 (1) of the German Copyright Act (UrhG). Despite the different definitions of a work, characters that are eligible for copyright protection can therefore also be eligible as work titles, provided that they are capable of being designated. In terms of trademark law, in addition to the copyright requirements (the “image” that this character embodies), it is therefore necessary for the character to be independently perceptible (“designatable”) in order to enjoy independent work-title protection, i.e., it must be able to develop a “life of its own” by detaching itself from the work. Furthermore, unlike in copyright law, it is not sufficient to simply create the work; the designation must also have gained a certain degree of recognition.
The Higher Regional Court of Hamburg assumes that the character of “Miss Moneypenny” has gained sufficient recognition. However, it does not meet the requirements for a work title because it does not even meet the copyright requirements for a protectable character: according to the Higher Regional Court of Hamburg, the film series does not paint a clear “picture” of “Miss Moneypenny,” neither in terms of her visual appearance nor her character traits — rather, both remain vague. It is not possible to identify a specific, uniform appearance: the character always appears in different guises – not least due to the embodiment and interpretation of different actresses. Nor is there a clear character portrait: the character traits, abilities, and typical behaviors also remain vague. The fact that the character is distinguished by her professionalism as an assistant and a loyal, friendly, and understanding relationship with James Bond is not sufficient. On the contrary, this rather shows that the character only has an “image” in interaction with “James Bond,” but not independently — that is, detached from the work. It is not the appearance and distinctive character traits that remain consistent, but only the name “Moneypenny.” This is not sufficient for work-title protection.
b. No protection as a sign that has acquired public recognition pursuant to Sec. 4 (2) MarkenG
Furthermore, according to the Higher Regional Court of Hamburg, a trademark within the meaning of Section 4 (2) of the German Trademark Act (MarkenG) does not exist for the sign “Miss Moneypenny” or “Moneypenny”.
According to Section 4 (2) of the German Trademark Act (MarkenG), trademark protection for a sign arises through the use of that sign in the course of trade, provided that the sign has acquired recognition within the relevant public. However, the prerequisite for this is that the sign must first have acquired recognition as a trademark. This presupposes use as a trademark: only if a sign is understood in trade as an indication of the commercial origin of the goods or services so designated can it fulfill its function of origin, namely, to distinguish between similar goods or services of different commercial origins. This circumstance has already proved fatal to another trademark in the context of the “James Bond” series: According to the findings of the European General Court (EGC GRUR Int 2010, 50 – Dr. No), the sign “Dr. No” did not serve as an indication of the commercial origin of goods and services, but as a film title – and as such only served as a reference to its artistic origin, not the commercial origin of a certain product or service.
The Higher Regional Court of Hamburg also failed to recognize any indication of origin in the use of the sign “Moneypenny” for similar reasons: “Moneypenny,” as used by the plaintiff, does not indicate the origin of specific goods or services, but merely refers to the film character. Therefore, there is no use as a trademark. Ironically, “Moneypenny” therefore shares the inglorious trademark fate of “Dr. No”: both refer to the artistic origin of the character so designated, but not to the commercial origin of specific goods or services. This is not sufficient.
5. Remarks
The Higher Regional Court of Hamburg has allowed an appeal on points of law against its decision — but limited to the legal questions concerning the protection of work titles. This is surprising.
Surprising, because the decision on the work-title right is entirely in line with the ruling of the same Hamburg senate in an earlier decision. In this case, the (same senate of the) Higher Regional Court of Hamburg recognized work-title protection for the comic character “Obelix,” explicitly referring to its originality, memorability, and popularity (OLG Hamburg, GRUR-RR 2006, 408 – OBELIX). An appeal against this ruling was rejected by the Federal Court of Justice (BGH GRUR-RR 2009, 408). Thus, at least at that time, the Federal Court of Justice even at the highest judicial level did not appear to have any serious concerns about the approach taken by the Higher Regional Court of Hamburg.
At the same time, considering the established case law – particularly that of the Federal Court of Justice – the fundamental rejection of a merely potential competitive relationship does not appear quite as clear-cut as the ruling (including the non-admission of an appeal on points of law in this regard) suggests. This “potential competitive relationship” has recently received renewed attention in case law and literature. In addition to the Higher Regional Court of Hamburg, the Higher Regional Court of Frankfurt am Main also deemed a “potential” competitive relationship to be insufficient in a ruling less than a month later (OLG Frankfurt am Main GRUR-RR 2025, 135). This restrictive view of the Higher Regional Court is heavily criticized by prominent voices (see Köhler, WRP 2025, 401).
The Higher Regional Courts of Hamburg and Frankfurt essentially base their rejection of a merely “potential” competitive relationship on the Federal Court of Justice ruling “Pflichten des Batterieherstellers” (BGH GRUR 2020, 303). However, this precedent only concerns a situation in which a (former) competitor had ceased its business activities. The point of reference in this case was therefore the termination of business activities, in which the Federal Court of Justice did not consider the merely theoretical possibility of re-entry as a “potential” competitor to be sufficient. However, the case discussed here by the Higher Regional Court of Hamburg concerns the point in time prior to the commencement of the business activity. These points in time (termination and commencement of a business activity) must therefore be clearly distinguished. This is noted not only by Köhler, but also by the Higher Regional Court of Hamburg itself when it refers to “whether the person concerned is already or still to be regarded as a competitor” (para. 58).
The Federal Court of Justice (BGH) has issued a clear ruling on the point in time of termination (“Pflichten des Batterieherstellers”, etc.): it does not accept a potential competitive relationship in this case. However, this does not necessarily equally apply to the point in time of commencement: although the Federal Court of Justice clearly rejects a “potential” competitive relationship after termination of the activity, it explicitly left this question open for the point in time of commencement of such an activity in an earlier judgment (BGH GRUR 2016, 1187 – Stirnlampen, para. 17).
On closer examination, the Higher Regional Court of Hamburg itself does not take such a strict view of the exclusion of a “potential” competitive relationship for the period prior to the commencement of business activities when it states: “The preparation for market entry must be so far advanced that the imminent commencement of business activities by the business in question on the market is already clearly apparent and therefore interests protected under competition law may already be affected.” Preparatory actions — without business activities having already commenced — therefore appear to suffice under certain conditions (“the imminent commencement must be clearly apparent”). Competition that is only ‘potential’ but already well defined should therefore suffice. This is not compatible with an apodictic rejection of a “potential” competitive relationship.
The question of the existence and requirements of a “potential” competitive relationship therefore appears to be unresolved at present. This is reason enough — in theory — for the Federal Court of Justice to provide clarity in this area as well.
