Use of mark on website does not necessarily constitute use in Norway

In Hauge v Hansen (Case 08-014455TVI-OTIR/07, September 9 2008), the Oslo District Court has ordered that the trademarks L’ESPRIT D’EDVARD MUNCH and MUNCH-VIN be revoked under Section 25(a)(1) of the Trademark Act.
Svein Erik Hansen owned a farm in Vestfold, Norway. In 1992 he planted Pinot noir grapevines and changed his production to wine. The wine was priced highly because production was limited. The high quality of the wine combined with the fact that it was the northernmost produced wine in the world resulted in Hansen’s wine becoming a collector’s item. Hansen sold his wine under the names L’Esprit d’Edvard Munch and Munch-Vin (after the Norwegian artist Edvard Munch). Hansen produced 1,000 bottles a year from 1995 to 1999. The wine was sold through the Norwegian wine monopoly, but was also exported to other countries. Hansen registered the mark L’ESPRIT D’EDVARD MUNCH in May 1998 and the mark MUNCH-VIN in March 1998 for wine in Class 33 of the Nice Classification. In 2001 Hansen had to shut down production due to illness. However, he kept a website that contained information on how to order his wine from outside Norway.
Sven Øivind Hauge owns and manages Norwegian company Rosmersholm AS. Rosmersholm imports spirits (but not wine) into the country and has a wholesale agreement with the Norwegian wine monopoly. Rosmersholm names its products after famous Norwegians (eg, the Henrik Ibsen cognac). In December 2005 Hauge applied for the registration of the trademark EDVARD MUNCH for alcoholic beverages and spirits in Class 33. The Norwegian Industrial Property Office rejected the application based on the earlier registered trademark L’ESPRIT D’EDVARD MUNCH. In January 2008 Hauge filed suit against Hansen, claiming that the trademarks L’ESPRIT D’EDVARD MUNCH and MUNCH-VIN:
  • had not been in use for the past five consecutive years; and
  • were invalid under Section 25(a)(1) of the act.
Hansen argued that the trademarks had been in use on his website from 2003 to 2008. According to Hansen, the website was visited regularly during this period. He argued that the trademarks were thus known in Norway and other countries, even though Norwegian laws and regulations prohibited the sale of his wine in Norway during this period. Furthermore, Hansen had completed two sales outside Norway during this period and had sent a bottle of his wine to a wine expert abroad for marketing purposes.
Hauge argued that:
  • the marks had to be used in Norway in order to satisfy the requirements of Section 25(a)(1) of the act; and
  • use of the marks during the relevant period was insufficient under the act.
In particular, Hauge claimed that use of the trademarks on Hansen’s website was insufficient. Moreover, he argued that the completion of two sales did not amount to genuine use of the marks. 
The Oslo District Court found in favour of Hauge. According to the court, use of the marks did not fulfil the requirements set forth by Section 25(a)(1) of the act on the following grounds:
  • Use of a trademark on a website which is written in English and expressly states that the goods cannot be sold in Norway does not constitute use of the mark in that country.
  • The fact that Hansen had sold his wine to two different customers and sent a bottle of his wine to an expert during the relevant period constituted use of the marks. However, such use was not genuine as the quantities were insufficient.
  • The fact that Hansen had goodwill in the trademarks did not mean that the threshold to satisfy the requirements of use was lower.
The judgment is not yet legally binding as Hansen may still appeal.
Kaia Bugge Fougner and Felix Reimers, Advokatfirmaet Grette DA, Oslo

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