Position trademarks

A position mark is a trademark consisting of the specific way in which the trademark is placed on the product.

Several advantages in choosing a position trademark

If you want protection for a logo element placed on a product, a position mark can provide greater protection than a figurative mark showing the position. This is because the position mark can be used on different versions of the product, while the figurative mark's protection is limited by elements in the mark. Furthermore, it may not be possible to register a logo as a figurative mark, but it may be distinctive and registrable when it is placed in a specific position on a product.

How to represent position marks in a trademark application?

According to the Trademarks Act, to register a trademark it must be reproduced in such a way that it is clear and obvious to both the public and the authorities what is to be protected. For position marks, the Trademark Regulation specifies that:

• you must specify that the mark belongs to the category "position mark",
• the mark must be reproduced in such a manner that its position, size and proportions in relation to the product are clearly shown
• elements that are not to be included in the registration must be clearly separated using dotted lines or the like,
• a description can be submitted with further information on how the sign is to be placed or affixed to the product.

When reproducing colour marks, further requirements for file format and size apply (PDF file).

An example of a reproduction of a position mark can be found in the EU's trademark register, EUTM no. 013755244, which is registered for "footwear" in class 25:

The trademark is registered with the following description and further information on how the mark is positioned on the shoes:

"The trademark is a position mark. It consists of a figurative element placed on the outer surface of the upper part of a shoe, extending lengthwise from the centre of the cuff of the shoe down to the sole. The dotted line shows the position of the trademark on the shoe, and does not form part of the trademark".

The requirements for reproduction of the trademark must be met before the Norwegian Intellectual Property Office can assess whether the mark meets the law's conditions for registration – for example, the requirements for distinctiveness.

Colour marks

If you apply for a combined mark or figurative mark in a particular colour it is not a colour mark. A colour mark is a mark where one or more colours in themselves are applied for as registered trademarks.

There is a need in the market to keep colours freely available for everyone to use, and we must therefore be careful not to give individual actors exclusive rights to a colour as a trademark. There are many combinations of figures and words, but colours come in a limited number (Lassen and Stenvik, Kjennetegnsrett, page 116).

It is also important to note that consumers are not used to seeing colours in themselves as an indication of commercial origin. Colours are perceived primarily as decorative or as descriptive of a characteristic of the product or service for which it is used, and not as trademarks.

However, you can apply for trademark registration of one colour alone or a combination of colours. Since consumers are not used to seeing colours as trademarks, registration of a colour mark will often depend on the applicant proving that the mark is well known as a trademark for the products and/or services applied for. More information on acquired distinctiveness.

How do you represent colour marks in a trademark application?

According to the Trademarks Act, to register a trademark it must be reproduced in such a way that it is clear to both the public and the authorities what is to be protected.

Within this framework, the Trademark Regulations provide further information on what must or can be submitted in an application for a colour trademark - whether the application concerns a colour trademark consisting of a single colour or consisting of two or more colours.

Colour mark consisting of a single colour without contours

In an application for a colour mark consisting of a single colour without contours, you must:

• specify that the mark is a colour mark,
• submit a rendering of the colour (a picture of the colour for which you are applying for protection, and
• submit the number of the colour in an international colour coding system (for example, the Pantone system).

There must be a match between the description of the type of trademark, the reproduction of the trademark and the description of the trademark with colour codes.

Examples of such colour marks:

VM 200905782
(finally dismissed)

(Pantone 2144 C)

VM 202113426
(under processing as of February 2023)

(RAL 2008)

Colour mark consisting of a combination of two or more colours without contours

In an application for a colour mark consisting of a combination of two or more colours without contours, you must

• specify that the mark is a colour mark,
• submit a rendering of the colours showing the systematic placement of the colours in a uniform and predetermined manner,
• submit the number of the colour in an international colour coding system (for example, the Pantone system).

In addition, you should submit a description of how the colours are placed systematically in a uniform and predetermined manner. In practice, we assume that this will usually be necessary in order to fulfil the requirement that it must be "clear and obvious" what is to be protected.

When reproducing colour marks, further requirements for file format and size apply (PDF file).

For questions about position marks and colour marks

• Preben Valklev Vikøyr: pvv@patentstyret.no 
• Magnus Haugo: mho@patentstyret.no