Findexa has no rights in Norwegian equivalent of 'yellow pages'

In Firmakatalogen AS v Findexa AS (Case LB-2003-9931, January 4 2005), the Norwegian Court of Appeal has overturned an earlier decision and has ordered the cancellation of the respondent's GULE SIDER (meaning 'yellow pages') mark.

Findexa AS, under its previous name of Telenor Media AS, obtained trademark registrations for GULE SIDER and TELEFONKATALOGEN GULE SIDER (yellow pages telephone directory). The Norwegian Patent Office held that, in principle, GULE SIDER was not distinctive. However, it found that Findexa had established its rights in the marks through use and accordingly it allowed registration in Classes 9, 16, 35 and 38 of the Nice Classification.

Based on these registrations, Findexa started to invoke its trademark rights against other companies using the term 'Gule Sider'. In 2002 it filed a law suit against Firmakatalogen AS, alleging infringement and claiming compensation. In response, Firmakatalogen brought a cancellation action against Findexa's GULE SIDER mark.

The court of first instance ruled in favour of Findexa. It found that the GULE SIDER registration was valid. Thus, Firmakatalogen's use of the term 'Gule Sider' infringed that registration. It awarded Findexa compensation of Nkr775,000, as well as legal costs. Firmakatalogen appealed.

The Court of Appeal first stated that the term 'Gule Sider' is descriptive. It noted that the term has been used to describe business directories for many years. Next, the court affirmed that a party may establish rights in a descriptive trademark through use. However, this requires clear evidence that the mark is known within the relevant circle of trade as that party's trademark.

As regards to the GULE SIDER trademark, the court reasoned that Findexa had not established that the relevant trade circle knew that it owned the mark (when used without the word 'telefonkatalogen'). It had failed to fulfil this requirement at both the date of application and the date of registration. Therefore, the registration was not in compliance with Section 13 of the Norwegian Trademarks Act and should be cancelled. The court dismissed the infringement claim against Firmakatalogen and awarded it legal costs.

It is worth noting that the decision has been appealed to the Supreme Court, meaning that it is not legally binding.

Felix Reimers, Advokatfirmaet Grette DA, Oslo