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18 March 2013
It has previously been suggested that the Norwegian Industrial Property Office (NIPO) fails to implement the same distinctiveness requirements as the European Union, despite Norway's obligations under the European Economic Area (EEA) Agreement. Based on previous decisions, it appears that NIPO examiners conduct a distinctiveness assessment that is stricter and more rigid than that conducted in most other jurisdictions.
Concerns over this lack of harmonisation in the area of distinctiveness have often been communicated to NIPO - particularly in the wake of a 2012 customer satisfaction survey carried out by NIPO. The survey revealed that such concerns are common. Both solo applicants and trademark agencies have reported dissatisfaction with NIPO's uniformity and predictability in handling trademark applications. According to the feedback given by NIPO's users, its practice does not seem sufficiently harmonised with that of other EU authorities (particularly the Office for Harmonisation in the Internal Market (OHIM)), seeming more stringent than the practice of other EU authorities.
NIPO has now commented on the results of the survey. It claims to take the feedback very seriously, and has presented some of the work it has done and is doing in an attempt to improve the quality of its trademark application processing.
So, does this mean that there will be a change in NIPO's practice with regard to distinctiveness assessments? Is harmonisation in sight?
NIPO began by presenting some background figures. In 2012 almost 15,000 trademark applications were processed. Of these, approximately 12,800 (86%) were granted protection in Norway, while approximately 1,800 were abandoned and about 80 refused. A good percentage of the applications that were abandoned likely met with objections from NIPO, which may have been why those applicants chose not to proceed with the applications. Nevertheless, NIPO pointed out that some 86% of national trademark applications led to registration, while 92% of international trademark registrations led to registration.
NIPO also referred to an international convergence programme which OHIM has launched in collaboration with national offices and user organisations, in an attempt to reach common ground on a series of issues for which EU IP offices have different practices. As a participant observer, NIPO has decided to participate in a number of projects under the programme. The goal is to identify any differences through thorough surveys of practices in participating countries.
As an example, NIPO referred to a survey on absolute grounds and figurative marks, which was conducted among all participating countries and OHIM in 2012.
In total, 12 trademark offices found that the above mark was devoid of distinctive character, while 16 trademark offices found the mark to be inherently distinctive. The survey, which included around 100 different figurative marks, examined the extent to which the member states, Norway and OHIM are harmonised with regard to the assessment of distinctiveness. A number of similar studies on other areas will expand the map in the future.
NIPO concluded that its practice is fully harmonised with the practice of the European Union and its member states.
Therefore, it is unlikely there there will be any significant change in NIPO's practice in relation to distinctiveness assessments in the near future; NIPO seems content with its existing practice, and has found this to be well harmonised with the practices of other EU authorities.
As a result, it is still recommended to file for protection of less distinctive trademarks in combination with distinctive elements, such as house marks or logos. As NIPO does not record disclaimers for elements that it may consider non-registrable and the courts may take a different view on distinctiveness, this may at last provide some protection from potential infringers.
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