Distinction between trademark law and unfair competition law gets even blurrier

After fighting numerous legal battles in several European jurisdictions, the Tripp Trapp chair - created by iconic Norwegian designer Peter Opsvik - finally found its way back home and, on July 27 2012, the Norwegian Supreme Court issued a landmark decision on the protection of applied art in Norway.

The case involved the Tripp Trapp chair and the Oliver chair, the latter having been introduced into the Norwegian market by Trumf AS, a company dealing with the administration of a loyalty programme whereby consumers can obtain loyalty points by purchasing goods in member stores and exchange these points for actual items, such as the Oliver chair. Although the main legal issues before the Supreme Court related to copyright, the court also found that Trumf had infringed the trademark rights in the phrase “The chair that grows with the child”. This slogan has been used by Stokke AS, the manufacturer of the Trip Trap chair, in its marketing since the early 1980s, and was registered as a trademark in 2008.

More specifically, Trumf had displayed the Oliver chair together with the following statement (authors’ translation from Norwegian) when marketing its loyalty programme:

“This fine child seat grows with your child. The smart design allows you to adjust the seat and the footrest and enjoy the chair for many years. A sturdy and stable child seat that is easy to put together.”

Trumf asserted that this statement did not constitute trademark use, since it did not communicate the commercial origin of the Oliver chair, but only described the functional characteristic of the product. Interestingly, the Supreme Court found it unnecessary to address this issue in detail, and stated that use of a protected trademark as an indication of commercial origin is not a prerequisite for a finding of trademark infringement.

The Supreme Court elaborated on this by holding that, although the statement in question did not contain any assertions with regard to the commercial origin of the Oliver chair, the similarities between the statement and the protected trademark, combined with the similarities between the chairs in question, could mislead consumers into believing that the Trip Trap chair and the Oliver chair were produced by the same manufacturer.

The court further noted that such confusion could eventually lead to the dilution of the protected trademark and harm the goodwill connected with the mark. The court thus found that the statement breached the exclusive rights granted to the trademark owner under Section 4 of the Norwegian Trademark Act.

The reasoning of the Supreme Court does bear a resemblance to the rationale behind Article 6(2)(a) of the Unfair Commercial Practice Directive (2005/29/EC) and what has traditionally been characterised as ‘passing off’ in the United Kingdom. Section 4 of the Norwegian Trademark Act is based on Article 5 of the EU Trademarks Directive (2008/95/EC); pursuant to Article 5(5), Norway was allowed to establish additional legal protection mechanisms for trademark owners “relating to the protection against the use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark”.

In Norway, such legal mechanisms against unfair competition have, however, found their implementation in the Marketing Control Act, and Section 30 seems to be especially relevant for the case in question. The provision states as follows (authors’ translation from Norwegian):  

“It shall be prohibited in the course of trade to use copies of distinguishing marks, products, catalogues, advertising materials or other produced items in such a manner and under such circumstances that such use must be considered an unfair exploitation of the efforts or achievements of another person, and presents a risk of confusion”.

By applying Section 4 of the Trademark Act in a case where Section 30 of the Marketing Control Act may have seemed more appropriate, the Supreme Court has not only illustrated, but also reinforced, the blurry line between trademark law and unfair competition law. While Trumf’s marketing campaign may have confused Norwegian consumers during the short period of time for which it lasted, the reasoning of the Supreme Court is likely to confuse Norwegian trademark practitioners for years to come.

Vincent Tsang and Felix Reimers, Advokatfirmaet Grette DA, Oslo