Relationship between trademarks and first names explored

The District Court of Oslo has issued its decision (Joined Case TOSLO-2009-71342 and TOSLO-2008-187040, November 18 2009) in a dispute between Sildakongen Produksjon AS and Arvid Otto Mørch, also known as Sildakongen, over the rights to the trademark SILDAKONGEN ('herring king'). The joined cases - an infringement action and an action for a declaration of invalidity - raised several issues, including the scope of protection of trademarks in a foreign language, and the relationship between trademarks and first names.
Sildakongen Produksjon was established in August 1988 and is one of the largest manufacturers of assorted herring products in Norway. The products are marketed and sold under the mark SILDAKONGEN.  
Mørch was one of the founders of Sildakongen Produksjon. He has dedicated his life to the promotion of herring and is also known as Sildakongen (the Herring King). Having obtained permission from the King of Norway, he even took the first name Sildakongen in 2005.
In 2008 Mørch filed suit against Sildakongen Produksjon, claiming that he should be allowed to sell herring under the trademark SILDAKONGEN. In response, Sildakongen Produksjon filed a countersuit, as well as an action for a declaration of invalidity of several registered trademarks owned by Mørch, including:
  • HARENGUS REX PURA NATURA (Registration 226 283) for goods in Classes 29, 30 and 31 of the Nice Classification; and
  • HERRING KING OF NORWAY (Registration 226 261) for goods in Classes 29, 30 and 31.
The district court found mainly in favour of Sildakongen Produksjon.
First, the court held that although Mørch was known as Sildakongen, he had not established trademark rights in that name under Section 2 of the Trademark Act, which provides that "the exclusive right to a trademark may also be acquired without registration when the trademark is established by use".
Second, the court found that there was a likelihood of confusion between Mørch's trademarks HERRING KING OF NORWAY and HARENGUS REX PURA NATURA on the one hand, and Sildakongen Produksjon's SILDAKONGEN mark on the other. The court concluded that the trademark HERRING KING OF NORWAY was similar to the SILDAKONGEN mark because:
  • it was simply a translation of the Norwegian words for 'herring king' into English; and
  • the two marks made the same associations.
The court also held that the trademark HARENGUS REX PURA NATURA was similar to the SILDAKONGEN mark because an average consumer would perceive that both marks made the same associations. The court emphasized that Mørch had not chosen this combination of words randomly and that he wanted consumers to perceive the marks in the same way.
Third, the court found that Mørch's first name, Sildakongen, was invalid. Although the legislation on names concerns only last names, the court applied Section 3 of the law to Mørch's first name because it had been adopted in breach of Sildakongen Produksjon's trademark rights.
Kaia Bugge Fougner and Felix Reimers, Advokatfirmaet Grette, Oslo

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