Trademarks that violate the "law"
There are very few trademarks that we consider to be in breach of "law", and this has therefore rarely been used by the Norwegian Industrial Property Office (NIPO) as a basis for refusing to register a trademark. It is far more common for other legislation to regulate access to the use of trademarks and other characteristics, such as a ban on advertising for alcoholic beverages or tobacco products.
Trademarks contrary to "public policy"
The grounds for refusal for marks that contravene "public order" are also rarely used. However, there are some examples where this basis for refusal has been used in practice. An example is the Vigeland case.
In 2014, Oslo municipality applied for trademark registration of six marks that contained works by Gustav Vigeland. Here the Norwegian Board of Appeal for Industrial Property Rights (KFIR) came to the conclusion that Oslo Municipality could not be granted an exclusive right through trademark registration because it would be contrary to "public order". The rationale was partly that the trademarks reproduced works of art that are of a very special cultural value. In addition, because the copyright protection period of 70 years had expired, and trademark registration of these specific works would be contrary to the societal considerations behind why we have a copyright protection period. In theory, a trademark registration could give an unlimited exclusive right to the works. You can read KFIR's united decision in the Vigeland case on their website.
Brands that go against "morality"
In the few cases where NIPO uses section 15 letter a of the Trademarks Act regarding marks that contravene "law, public order and morality", it is in practice most often for marks that contravene "morality".
When deciding whether a brand is "contrary to morality", we must consider whether the brand offends or hurts people with normal perceptions and attitudes. There is no requirement that a large part of the turnover circle be infringed; the provision also protects minorities. However, the fact that some people with a particularly strict outlook on life are offended is not a sufficient basis for refusing trademark registration.
It does not matter to NIPO's assessment that the applicant for a trademark has no intention of offending anyone. We must base our assessment on how the trade mark in question will generally be perceived when it is used for the goods and services for which it is applied for, regardless of how the applicant actually intends to use the mark.
Examples of brands NIPO has refused
NIPO has refused to trademark the expression "damn gay". It was attempted to be registered by NRK for, among other things, clothing and television production. NIPO believed that the mark would be perceived as offensive and strongly derogatory towards a group of people, and that registration of the trade mark would therefore be contrary to morals. We could not attach importance to the fact that the applicant had good intentions with the trademark application and the use of the expression "damn homo".
In the autumn of 2022, NIPO decided that a mark consisting of a cartridge with the text RED ARMY was morally objectionable. The Red Army was the name of the Soviet army until 1946, and the cartridge can give associations to war. Due to Russia's invasion of Ukraine contrary to international law and the subsequent war, NIPO believes that this mark will be perceived as offensive and suitable to arouse outrage. This case is (as of December 2022) only provisionally denied, and not finally decided.
We have also refused to register the brand Kirkebrann - True Norwegian Black Candle, applied for, among other things, candles. In this assessment, we took particular account of the church fires that have taken place in Norway in recent decades, especially in the 90s. NIPO assumed that most people in Norway believe such actions are reprehensible, and therefore concluded that the mark would be perceived as morally offensive. We could not attach decisive importance to the fact that the brand was intended to be humorous.
Examples of brands that NIPO has accepted
The Swedish organization Ung Cancer wanted to register the trademark "Fuck cancer" in 2013. This was initially rejected because we believed that Norwegians would be offended by the fact that the term contains the English swear word "fuck". However, after a mark with the same mark text was applied for in 2019, we came to the conclusion that the mark could be registered. In the meantime, there had been clarifications in case law related to morally objectionable brands that called for such a solution. During the assessment, we placed decisive emphasis on the fact that even if the mark contains the word "fuck", it is used in a context that prevents people from perceiving the mark as offensive.
We have registered the trademark "Pubertetscamp" for NRK. Here we considered whether the figure in the label "contradicts morality", but concluded that it did not.
The brand "COMFYPUSSY", applied for underwear and clothing, was considered morally objectionable when examined by the Patent Office. The reasoning was that the vulgar word PUSSY would be perceived as degrading to women, and that the brand COMFYPUSSY as a whole would be perceived as offensive. However, the case was appealed to the Klagenemda for industrial rights, which concluded that the mark was not contrary to "morality". The court of appeal considered that even though PUSSY is a somewhat vulgar word, the composition COMFYPUSSY would not be perceived as offensive.
The Business Names Act has a corresponding provision
The Business Names Act has a provision in § 2-5 that you cannot register a business name in the Business Register that is "suitable to cause outrage". Although the provision has a different wording than the "contrary to morals" provision in the Trademarks Act, the assessments according to these provisions are basically the same. Business names are, however, sought at the Register of Businesses, and it is the Register of Businesses that carries out the assessment.
An example of a company name that has been assessed as "suitable to arouse outrage" is the company name "Fette Reint AS". Here, the Business Register came to the conclusion that the word "fat" would be perceived as gender discriminatory, and thus that the business name could be suitable to arouse outrage. The case was then appealed to the Ministry of Trade and Fisheries. The ministry stated that it would not be appropriate to arouse outrage by using the word "fat" in itself, even if the word were to refer to the female genitalia, but that the decisive factor would be whether the word is used in a gender-discriminatory or gross manner. It was concluded that the word "fat" was not used in a gender-discriminatory or gross manner in this case, and that the name "Fette Reint AS" would therefore not be "suitable to arouse outrage".
You will not be denied access
It is important to point out that NIPO does not refuse anyone the use of a trademark that we consider morally objectionable. The reason for refusal only applies to the registration of a trademark. However, there are many advantages to having a registered trade mark, as this gives the holder a documented exclusive right to use the mark in commercial activities.
