Public accustomed to identifying shoes or clothing based on distinctive design

On March 25 2014 the Oslo District Court rendered its judgment in the case between Swedish company Tretorn Aktiebolag and the state of Norway, represented by the Norwegian Board of Appeal for Industrial Property Rights.

The case concerned the decision by the former Second Division of the Norwegian Industrial Property Office (which was replaced by the Board of Appeal from April 1 2013) not to register the following mark for "goods made of [leather and imitations of leather] and not included in other classes" in Class 18, "clothing, footwear, including sports and leisure wear shoes and headgear" in Class 25 and "games" in Class 28 of the Nice Classification:

International trademark  registration No 0870677
Norwegian trademark application No 200811337

The mark had been registered for similar goods in several other countries, such as Australia, China, Japan, Switzerland, Korea, Singapore, Russia, Turkey, Ukraine, the European Union and (partly) the United States.

The Board of Appeal (and the Norwegian Industrial Property Office) had found that the mark lacked distinctiveness and that it would be perceived merely as a decorative element. Thus, it would not function as a trademark - that is, it would not identify the manufacturer of the product.

In its judgment, the District Court took a different view, finding that the average consumer would not perceive the mark as a decorative element. The court quoted Paragraph 20 of the ‘half-smiley’ decision of the EU Court of First Instance (Case T-139/08) when assessing the average consumer's level of attention:

“The distinctiveness of the mark at issue must therefore be assessed in respect of all the goods for which protection of that mark has been claimed, taking into account the presumed expectations of an average consumer who does not display a particularly high level of attention.”

However, the District Court found that the bar for distinctiveness should not be too high. The court acknowledged that it is common knowledge that marks such as Tretorn's have become increasingly common on clothing, and particularly on footwear.

The District Court agreed with the evaluation of the Court of Justice of the European Union in Deichmann (C-307/11 P) and of OHIM in Gamp Studio SRL (August 28 2013) concerning the use of marks on clothing and footwear. The public has become accustomed to identifying a particular brand of running shoes or sports shirts based only on a distinctive pattern or design. The extensive use of advertising on television, the Internet and in the printed media have, in the eyes of the relevant public, asserted the ability of a design, even a relatively simple one, to act as a distinguishing mark.

The court stated that the level of attention of Norwegian consumers is just as high as that of EU consumers. Therefore, the norm used by the Board of Appeal when assessing the distinctiveness of the mark was stricter than that used by OHIM. As a consequence, based on the above, the District Court found that the mark was distinctive and would not be perceived merely as a functional or decorative element.

The judgment has been appealed and is due to be heard in the Borgarting Court of Appeal in May 2015.

Felix Reimers and Thomas Hagen, Advokatfirmaet Grette DA, Oslo