Infernus victorious in GORGOROTH Case

In Tiegs v Visnes (Case 08-140784TVI-OTIR/03, March 10 2009), the Oslo District Court has held that the registration for the trademark GORGOROTH was invalid on the grounds that the mark was already established by use in the market at the time of the application for registration.

 

'Black metal' band Gorgoroth was established in 1992 by Roger Tiegs, who is better known under his artistic name Infernus. Since 1992, approximately 25 musicians have been involved in the band, and Tiegs is the only remaining original member. Kristian Espedal, better known as Gaahl, and Tom Cato Visnes, also known as King of Hell, joined the band in 1998 and 1999. Gorgoroth has toured extensively around Europe and South America.

 

Due to a disagreement between the three band members with regard to the band's behaviour, in October 2007 Espedal and Visnes decided to exclude Tiegs from the band and continue the band's activities under the name Gorgoroth.  

 

In September 2007 Visnes had applied for the registration of the trademark GORGOROTH. In October 2007 Tiegs opposed the application on the grounds that:

The Norwegian Patent Office dismissed the opposition and registered the GORGOROTH mark in the name of Visnes in January 2008. In October 2008 Espedal was registered as joint owner.

 

In September 2008 Tiegs filed suit before the Oslo District Court claiming that the registration of the trademark GORGOROTH was invalid. Tiegs argued that:

The court found that the registration was invalid under Sections 14(6) and (7) of the act. It concluded that at the time of the application for the registration of GORGOROTH, the mark was already established by use in the market for identical goods and services. Therefore, there was a likelihood of confusion among the public.  

 

However, the court found that the rights in the name and trademark GORGOROTH were owned by the band - that is, any members who, at any time, were in the band together - and not by Tiegs personally. Furthermore, the court found that Visnes and Espedal had no right to exclude Tiegs from the band. Tiegs, as the founder of the band, could not be excluded if he did not wish to leave the band. In other words, Visnes and Espedal had excluded themselves from the band when they decided that they no longer wished to cooperate with Tiegs. Therefore, Visnes and Espedal had infringed the band's trademark rights.

 

The court concluded that the mark had been registered in violation of Sections 14(6) and (7) of the act and was thus invalid.

 

The dispute also involved the following issues, which will be decided at a later date: