It is well known that Norwegians like to stand out. Norway is not a
member of the EU and the majority of Norwegians would like to keep it
that way. Norway is, however, part of the European Economic Area (EEA).
Through the EEA Agreement, the Norwegian trade mark authorities are
obliged to implement the same requirements of distinctiveness as those
of EU member states.
However, harmonisation is conspicuous by its absence. The examiners
of the Norwegian trade mark authorities uphold a distinctiveness
assessment practice which is stricter and more rigid than in most other
jurisdictions. Norway often experiences distinctiveness refusals
relating to trade marks that have already been accepted in the EU, the
United States and other countries in which objections were not raised.
Linguistic and cultural differences between countries must be taken
into account when assessing a trade mark and its ability to function as
an indicator of commercial origin. However, in many cases, there are no
such differences or circumstances that could justify refusal by the
Norwegian authorities. Documenting acceptance of the same mark as a
Community trade mark does not carry much weight when arguing against a
distinctiveness refusal in Norway. Such arguments are usually countered
by standard arguments to the effect that an isolated case cannot create a
precedent and that all marks must be assessed individually. However,
when documenting the acceptance of a mark in multiple jurisdictions, the
argument gradually loses its validity.
An applicant could show extensive worldwide acceptance – in some
cases in over 40 jurisdictions – and still meet with the so-called
isolated case argument in Norway.
It is arguable that keeping a strict distinctiveness level guarantees
the holder a certain scope of protection with respect to later marks.
However, it is indisputably a challenge for a trade mark holder to adapt
its trade mark and marketing strategies to conform to the different
distinctiveness practices found in other jurisdictions.
Norway's obligation to harmonise its distinctiveness practice with
that of the EU seems to have failed. To remedy this, trade mark holders
would be well advised to file for the application of the non-registrable
mark in combination with a distinctive house mark or logo. The
Norwegian trade mark authorities have not practised disclaimers of
non-registrable trade mark elements in recent years as such elements are
automatically excluded from the protection obtained. Hence, third
parties would not know the scope of protection of a descriptive or
suggestive trade mark if registered in combination with a distinctive
word or logo, which in turn could possibly prevent potential infringers
from using the same or similar marks.
|Trine Greaker Herzog|
Bryn Aarflot AS
Tel: +47 46 90 30 00
Fax: +47 22 00 31 31