Establishment of use of a trademark

A guide to the factors to which the Norwegian Industrial Property Office attaches importance when assessing whether a trademark is established by use.

Establishment of use, and the use of a trademark may be significant in two contexts:

  1. A trademark which, in principle, is descriptive or lacks distinctive character may nevertheless be registered if you have used the mark in such a way that the mark has become well known as someone's special recognisable sign.
  2. A trademark established by use is protected against other marks where there exists a likelihood of confusion, and can prevent registration of such marks if the holder requires it. To prevent others registering your mark established by use, it may be sufficient for the mark to be established by use locally. Rights locally established by use cannot, however, be used in a case in which someone asks for a mark to be declared invalid.

Documentary evidence

You must always provide documentary evidence of use of the trademark. It is not sufficient to say that the mark is used or established by use. Even if there is little doubt that a trademark is well known, you must, as a minimum requirement, refer to one verifiable source, for example an article in a serious newspaper or magazine, an advertising brochure or similar source. If you refer to a website, you must attach a dated printout from the website.

All documentary evidence of use of a trademark will in principle be relevant to the assessment. The less distinctive a mark is, the greater the extent of establishment by use needed. The Supreme Court has ruled that strict requirements must be met for it to be possible for a descriptive mark to be sufficiently established by use as a trademark. See Norwegian Law Gazette Rt. 2005. p.1601, Gule Sider, paragraph 48. In this judgment you can also find a useful overview of what aspects are relevant.

Link to decisions from the EU Court of Justice:

http://curia.europa.eu/jurisp/cgi-bin/form.pl?lang=enKontakter

Link to EUIPO (European Union Intellectual Property Office):

https://euipo.europa.eu/ohimportal/en/

Legislation

See Trademarks Act, Sections 3, 14, 16, 35.

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