Best in class – or lack of harmonisation? - International Law Office

It is well known that Norwegians like to stand out. Norway is not a member of the European Union and the majority of Norwegians would like to keep it that way. Although Norway is not an EU member, it is a member of the European Economic Area (EEA). Through the EEA Agreement, the Norwegian trademark authorities are obliged to implement the same requirements of distinctiveness as those of EU member states.

However, so-called 'harmonisation' is conspicuous by its absence. The examiners of the Norwegian trademark authorities currently uphold a distinctiveness assessment practice which is stricter and more rigid than that in most other jurisdictions. Norway often experiences distinctiveness refusals relating to trademarks that have already been accepted in the European Union, the United States and other countries in which objections were not raised.

Linguistic and cultural differences between countries must be taken into account when assessing a trademark and its ability to function as an indicator of commercial origin. However, in many cases, there are no such differences or circumstances that could justify refusal by the Norwegian authorities. Documenting acceptance of the same mark as a Community trademark does not carry much weight when arguing against a distinctiveness refusal in Norway. Such arguments are usually countered by standard arguments to the effect that an isolated case cannot create a precedent and that all marks must be assessed individually. However, when documenting the acceptance of a mark in multiple jurisdictions, the argument gradually loses its validity.

An applicant could evidence extensive worldwide acceptance - in some cases in over 40 jurisdictions - and still meet with the 'isolated case' argument in Norway.

It is arguable that keeping a strict distinctiveness level guarantees the holder a certain scope of protection with respect to later marks. However, it is indisputably a challenge for a trademark holder to adapt its trademark and marketing strategies to conform to the different distinctiveness practices found in other jurisdictions.

Norway's obligation to harmonise its distinctiveness practice with that of the European Union seems to have failed. To remedy this, trademark holders would be well advised to file for the application of the non-registrable mark in combination with a distinctive house mark or logo. The Norwegian trademark authorities have not practised disclaimers of non-registrable trademark elements in recent years as such elements are automatically excluded from the protection obtained. Hence, third parties would not know the scope of protection of a descriptive or suggestive trademark if registered in combination with a distinctive word or logo, which in turn could possibly prevent potential infringers from using the same or similar marks.

For further information on this topic please contact Trine Greaker Herzog at Bryn Aarflot AS by telephone (+47 92 83 16 19) or by fax (+47 22 00 31 31) or by email (tgh@baa.no).