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10 February 2014
The Norwegian IP Appeal Board has issued a decision relating to a trademark registration for the mark ALFRED NOBEL in relation to "spring water, mineral water and drinking water" in Class 32.
The Nobel Foundation had filed an invalidity claim against the ALFRED NOBEL registration on the grounds that use of the ALFRED NOBEL mark on Class 32 goods would deceive the public into believing that by purchasing the goods, they were supporting peace-keeping or charity work.
The Nobel Foundation claimed that the applicant was trying to take unfair advantage of its efforts, achievements and activities, referring to the legacy of Alfred Nobel. With reference to UNICEF's sales of drinking water and Fairtrade labelling, the foundation claimed that for consumers, it would appear likely that the foundation would engage in activities beyond awarding prizes. Consequently, consumers could also be deceived into believing that by buying ALFRED NOBEL beverages, they were supporting the foundation's charity and peace-keeping work.
On the other hand, the applicant claimed that the statutory provision, similar to Article 3(1)(g) of the EU First Trademarks Directive, protects the general public and not commercial competitors' interests in the same name.
The Norwegian Industrial Property Office (NIPO) rejected the invalidity claim, finding that the statutory provision refers only to objective qualities of the goods (eg, their nature, quality or geographical origin), and not to subjective associations such as an incorrect reference to underlying support of peace-keeping work or charity purposes. Furthermore, the NIPO found that The Nobel Foundation had failed to prove that the average consumer would associate ALFRED NOBEL with charity or peace-keeping work.
The IP Appeal Board stated that the NIPO was incorrect in finding that only objective qualities of the goods are relevant when considering whether a trademark is deceptive. However, the IP Appeal Board also emphasised that misleading associations referring to the commercial origin of goods falls outside the scope of the relevant statutory provision. Instead, the subject criterion is whether the public, having been exposed to the trademark, had been deceived, or whether there is a sufficient risk that they might be deceived, with regard to what they are actually purchasing.
The IP Appeal Board concluded that The Nobel Foundation had not sufficiently documented that it was known for anything outside its prize-awarding activities, and that the evidence filed in support of this claim was insufficient to prove that the public believed that Alfred Nobel or The Nobel Foundation was engaged in charity or peace-keeping work in general.
Furthermore, the IP Appeal Board specified that in accordance with existing legislation, the first to file principle applies to trademark registrations of historical persons' names. It is not necessary for the first applicant to file to document any affiliation to the deceased or the deceased's name, for instance by way of consent to the registration of the name as a trademark on certain goods or services.
The IP Appeal Board therefore concluded that the ALFRED NOBEL mark could not be regarded as deceptive to the public in regard to the nature or quality of the goods.
The decision is important as it emphasises the first to file principle that underlies Norwegian trademark law. However, the finding that the deception criterion could include considerations outside mere objective qualities of the goods may move the statutory provision closer to considerations of risk of confusion between trademarks and commercial origins, or fraudulent acts. Whether this is the intended purpose behind the statutory provision is uncertain; however, it will be interesting to see how far claims of deceptive filings can be stretched.
For further information on this topic please contact Celine Varmann Jørgensen at Bryn Aarflot AS by telephone (+47 92 83 16 19), fax (+47 22 00 31 31) or email (email@example.com). The Bryn Aarflot AS website is available at www.baa.no.
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