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14 January 2013
The Norwegian Industrial Property Office (NIPO) routinely carries out cross-checks between the international classes under the Nice Classification when assessing the similarity of goods and services. It has become settled administrative practice that there is at least an average degree of similarity between a product in Classes 1 to 34 and sales services in Class 35 (wholesale or retail) relating to the same goods. In a recent case the NIPO Re-examination Division considered the question of whether this practice has any bearing on the related assessment of whether use requirements were met for the goods covered by a registration. This question had not previously been answered in Norwegian trademark law.
The contested trademark was registered in 2003 for foodstuffs and beverages in Classes 29, 30, 31 and 32. In December 2011 an administrative cancellation action was filed against the mark based on non-use. The parties agreed that the mark had been put to genuine use as a trademark, but not for any of the goods covered by the registration. Instead, the sign was used as a trademark for a chain of convenience stores and hence for sales services related to all or most of the goods covered by the registration.
The NIPO decision noted that where the use requirements are met for part of the specification, the mark should be cancelled for the remaining goods only. The question was where the line should be drawn; reference was made to, for example, a Norwegian appeal court decision where use of a mark for chairs only was found to meet the requirements for the wide term 'furniture'. It was nevertheless pointed out that the assessment is markedly different from the comparison of goods and services carried for two conflicting marks. Thus, the above-mentioned administrative practice was found not to be directly relevant.
According to the decision, the key issue is the mark owner's real and commercial interest in maintaining the registration – regard should be had to its legitimate interest in being able to extend its range of goods or services in the future. Reference was made to the General Court's decision in MFE Marienfelde v OHIM (Case T-126/03). Reference was also made to the European Court of Justice decision in Minimax (Case C-40/01), which states that genuine use may be established for goods and services which, although not integral to the make-up or structure of the goods previously sold, are directly related to those goods and intended to meet the needs of customers of those goods.
However, In the case at hand the NIPO concluded that foodstuffs and beverages were too remote from and unrelated to retail sale services. Since the assessment should be stricter and the scope narrower than in likelihood of confusion cases, and moreover since the mark owner had demonstrated no commercial interest in the goods per se since the registration in 2003, the registration was cancelled for all goods.
In view of this decision, mark owners may want to consider completing their portfolio in order to avoid non-use issues and loss of trademark rights.
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