Court of Appeals: Intellectual Property Office was wrong to ignore CTM registration

Norway

The Borgarting Court of Appeals has considered whether a figurative mark applied for by Tretorn Aktiebolag was sufficiently distinctive to be registered (see Section 14 of the Norwegian Trademarks Act). The court's conclusions may spell changes for the future.

The mark in question was International Registration No 0870677, depicted below:

The international registration covered goods in Classes 18, 25 and 28 of the Nice Classification (leather goods, clothing, footwear, games and sporting articles). The registration was based on a Community trademark (CTM), and had been accepted in several non-European countries.

The question put before the court was whether the Norwegian Intellectual Property Office's (NIPO) refusal to grant protection to the mark was valid. The NIPO had argued that the average consumer of the concerned goods had varying degrees of attention, and that he or she would not perceive such a sign as a trademark. The NIPO cited several earlier decisions and concluded that this high threshold for distinctive character was in line with earlier practice. The fact that the mark had been accepted for registration in the European Union and other countries was therefore not relevant to the assessment of the mark.

The decision touched on two questions of importance:

  1. What is the correct threshold for distinctiveness under Norwegian trademark law?

  2. What weight should be given to OHIM decisions in cases concerning identical marks registered for the same goods?

Regarding the first question, the court recalled the case law of the EU courts – in particular, the ‘half-smiley’ decision (C-329/02), which established that only a minimum degree of distinctive character is required for a mark to be registrable. After assessing a range of decisions regarding trademarks for sporting goods and similar items, the court concluded that the main question was whether Tretorn's mark would be perceived as a mere decoration, and therefore be incapable of fulfilling its function as an indication of commercial origin.

The court found that the mark would not be perceived as a mere decoration, and that it could be registered in Norway. The court's decision was based on a concrete assessment of the mark. Nevertheless, it was heavily influenced by the fact that various marks accepted at EU level were, in the court's opinion, less distinctive than the mark at issue in the present case.

As to the importance of OHIM decisions accepting identical marks for the same goods, the court found that some weight should be placed on such decisions. Although the registration of the mark in the European Union was not the deciding factor here, the court's decision sets an important precedent for all future applications for marks that are already registered in the European Union. The court stated that, in the interest of the harmonisation of Norwegian law with EU law, a CTM registration should be afforded some argumentative weight when assessing whether a mark has the required level of distinctive character in Norway. The court further stated that there were no special circumstances that indicated that there were differences between the perception of the mark in the European Union and that in Norway. The court's statement should mean that NIPO's long-standing practice of ignoring CTM registrations for identical marks cannot be upheld.

The decision implies that the NIPO had applied too strict a threshold when assessing the distinctive character of the mark, and that it was wrong to ignore the fact that the mark had been accepted by OHIM. It remains to be seen whether this signal from the court will be heeded by the NIPO in future decisions.

The Borgarting Court of Appeals is expected to issue a decision in a similar case - concerning the mark ROUTE 66 and a registration for an identical mark accepted by OHIM - this October.

Felix Reimers and Yngve Øyehaug Opsvik, Advokatfirmaet Grette DA, Oslo

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