Appeal court finds that claim for exclusivity lacks heart

The Agder Court of Appeal has considered whether a company had an exclusive right to use red hearts in its logo and marketing activities (Case LA-2007-61816).

Omsorgstjenesten AS (which translates as 'care services') started using red hearts as part of its logo in 2003. Two years later a competitor entered the market offering the same type of services in the same geographical area and also using red hearts in its logo.

Omsorgstjenesten brought the matter to court, claiming that the competitor had wilfully copied its logo, both by using the Norwegian word for 'care' in its trade name and by using a red heart in its logo. Omsorgstjenesten claimed to have put considerable effort into building the red heart brand. It asked that the court stop the competitor from taking advantage of its goodwill.

The court found that the red heart had played a crucial part in Omsorgstjenesten's marketing and that the company had succeeded in establishing itself in the market. The court also found that the competitor was well aware of Omsorgstjenesten's use of hearts in its logo.

On appeal, however, the Agder Court of Appeal found in favour of the competitor. The court referred to Section 8(a) of the Marketing Control Act (Unfair Competition Act), noting that it prohibits the imitation of marks if:

• the imitation must be considered as an unreasonable exploitation of the efforts or results of another party; and
  
  
• there is a danger of confusion.

The court further noted that copying someone else's mark is not illegal as such, unless it occurs under circumstances in which the imitation must be considered as an unreasonable exploitation. For a sign to be worthy of protection, it must be so valuable that others would save a certain amount of work, efforts and costs if they copied the sign. Further, for a party to be able to claim protection under the act, it must have created something original, concerning either the whole or parts of the sign for which protection is claimed.

The court found that the term 'care' is descriptive and an obvious term for the services offered by both Omsorgstjenesten and its competitor. The term is also used by others (eg, municipalities) and cannot be seen as being distinctive. As a result, the term cannot be said to be worthy of protection. A red heart is a common symbol, popularly used in various contexts. It symbolizes something positive, such as love, closeness, warmth and wellbeing. The use of red hearts in marketing, therefore, does not represent a particularly creative effort. Hearts, as such, are not distinctive and protection, in the sense of exclusivity, cannot be claimed for them.

Finding that the combination of the word 'care' and a red heart to represent a business offering care services was not original enough to deserve protection, the court concluded that there was no unreasonable exploitation on the part of the competitor.

On a more general note, the court stated that anyone who markets products or services under descriptive marks runs a considerable risk. There is a particular need to keep the use of such terms free and no one can expect to be able to claim an exclusive right to use common expressions or symbols. The lesson to be learnt from this judgment is that the design of symbols must be creative or extraordinary in order for a holder to claim exclusive rights in them. In the case of the red hearts, it would probably not have helped Omsorgstjenesten's case if its logo had been registered as a trademark, because, as a general rule, even registration does not secure exclusivity in the case of descriptive words or symbols.

Cecilie Haavik, Advokatfirmaet Grette DA, Oslo