Trademark rights: What is actually protected, and what can you claim exclusive rights to?

Getting a trademark registered is an important step on the journey for many entrepreneurs and companies. You get tangible proof that part of the company's identity is protected by law. But what does this right actually entail?

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What is protected?

When you register a trademark, the protection attaches to the distinctive elements that make your brand unique. You therefore do not necessarily get exclusive rights to all elements of the brand. It would often be unreasonable.

For example, if you register the brand text PREBENS PIZZA for pizza or restaurant business, you do not get exclusive rights to the word "pizza". The word PIZZA in itself is not a distinctive element of the mark, and in addition it would be unreasonable to give someone a monopoly on a purely descriptive word.

If you register a mark consisting of a descriptive text and a distinctive figure, you do not get protection for the descriptive text alone.

Or if you register a mark consisting of both text and figurative elements, for example, you will not get protection only for figurative elements that have a purely decorative or descriptive function.

PREBENS PIZZA (word mark)

Registered for frozen pizza and restaurant business. Protection is not granted for the word PIZZA, because this is descriptive and lacks distinctiveness. (Fictitious brand)

BURGER SHACK (combined brand)

Registered for restaurant services. Protection is not granted for the brand text BURGER SHACK alone, because it is descriptive and lacks distinctive character. (Case number 202110306)

MONTACHEM INTERNATIONAL (combined brand)

Registered for chemical products. Protection is not granted for the world map or the word INTERNATIONAL alone, because these elements are descriptive and lack distinctiveness. (Case number 202210128)

The relationship between word marks and combined marks

A registered word mark provides protection for the word itself, in all fonts and colours. A word mark thus differs from a combined mark which consists of a mark text with a specific logo design. If your mark consists of a logo design, it is basically the word with the design that is protected.

But even if the protection of a combined mark primarily applies to the specific combination of text and figurative elements, protection is obtained against confusing trademarks. Two marks with similar words can be confused even if the words have different figurative designs.

Coca-Cola

Word mark. Registration no. 26924.

Coca-Cola

Combined brand. Registration no. 113352.

Although a word mark in some cases provides more protection than a combined mark, there may be good reasons for registering a combined mark instead. For example, if you always use the logo as in a certain design, a registration with this design can provide stronger protection against imitation of the brand.

Exclusive right to use the brand

A trademark registration gives you exclusive rights throughout the country. This means that you can stop others from using identical or similar marks for the same or similar products to which your registration applies, if there is a risk of confusion.

After the trademark has been registered, the Norwegian Industrial Property Office (NIPO) prevents others from registering trademarks in Norway that could be confused with yours. In addition, it is your responsibility to enforce the right and prevent others from copying or imitating your mark.

The trademark right only applies in Norway. To obtain protection in other countries or in the EU, you must apply for trademark registration in the individual countries or through international search schemes.

Color or black and white?

Your trademark will only be protected in the color you have applied for. If you then apply for trademark protection in black and white, this will not automatically apply to all colours.

Even if a trademark registration today only covers the color in which the mark is applied for, it is still possible to prevent others from using confusing marks. For example, if you have registered a mark in one particular colour, you will typically be able to refuse others to use the same mark in other colours, if there is a risk that consumers may confuse the marks.

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