Name of well-known children’s books character can be registered as trademark
On September 10 2013 the newly established Norwegian Board of Appeal for Industrial Property Rights issued its decision in a case concerning the registrability of the word mark PIPPI LANGSTRØMPE (‘Pippi Longstocking’). The mark had previously been refused protection by the Norwegian Industrial Property Office (NIPO). However, the Board of Appeal did not agree with the legal reasoning of NIPO, and the refusal was annulled.
In 2008 Saltkråkan AB, the holder of the various rights derived from the works of famous Swedish author Astrid Lindgren, filed a trademark application for the registration of the word mark PIPPI LANGSTRØMPE. The application covered goods and services in Classes 9, 16, 28 and 41 of the Nice Classification.
The mark was refused protection on the grounds that it was descriptive and lacked distinctive character. The refusal was limited to the goods and services related to entertainment, such as computer programs, CDs, sound books, books stored on CDs, paper books, toys and entertainment services.
NIPO recognised that Pippi Langstrømpe was a well-known character created by Astrid Lindgren. However, despite the fact that Pippi Langstrømpe was considered to be well known within the relevant circle of trade, NIPO was of the opinion that the mark indicated only the kind or quality of the refused goods and services. According to NIPO, the mark was descriptive because those goods and services concerned, or were connected to, the character Pippi Langstrømpe.
In addition, NIPO held that there was a strong need to keep the term ‘Pippi Langstrømpe’ in the public domain.
Finally, NIPO stated that the mark PIPPI LANGSTRØMPE did not have sufficient distinctive character. In NIPO’s opinion, PIPPI LANGSTRØMPE would be understood as a generic term. Hence, it would not be recognised as a trademark and would not be able to function as a guarantee of origin.
The application was therefore rejected under Section 14 of the Norwegian Trademark Act. Because the applicant refused to limit the list of goods and services, the application was rejected in its entirety.
The decision was appealed, and the Board of Appeal did not agree with the legal reasoning of NIPO.
As a starting point, the Board of Appeal stated that PIPPI LANGSTRØMPE, as such, is not descriptive. The board agreed that Pippi Langstrømpe is a well-known character but, contrary to NIPO, it believed that the fact that the relevant circle of trade understands who the character is with respect to the goods and services did not imply that the mark PIPPI LANGSTRØMPE is descriptive. The understanding of NIPO in this respect would mean that the mark had degenerated into a generic term, and the board found no evidence justifying this conclusion.
The Board of Appeal also held that PIPPI LANGSTRØMPE had the ability to function as a guarantee of the commercial origin of the goods/services. In this respect, the board found no reason why Pippi Langstrømpe should be treated differently from other characters from the literary world that had previously been registered as trademarks (eg, HARRY POTTER and WILLY WONKA). The fact that the relevant circle of trade recognises the character, as well as the originator, clearly meant that the mark indicated the commercial origin of the goods/services.
Finally, the Board of Appeal commented on the fact that PIPPI LANGSTRØMPE had been registered as a trademark in various other jurisdictions. This was held to be an argument in favour of the applicant and the registrability of the mark.
The Board of Appeal concluded that NIPO’s refusal was unfounded and the decision was thus annulled.
Siw Lysell Dølvik and Felix Reimers, Grette DA, Oslo
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