Acquired distinctiveness through use

The Norwegian Industrial Property Office cannot initially register a trademark if it is descriptive and/or lacks distinctive features. If, however, you can prove that the mark has acquired distinctiveness through use, it is still possible to get the trade mark registered.

Why can't we register marks that are descriptive or not distinctive?

Simply explained, this is because you basically cannot obtain an exclusive right to words and signs that others need to use on their products, or that will not be perceived as trademarks.

But if you should be refused a trademark application because your mark is descriptive and/or lacks distinctiveness, all hope is not necessarily lost.

What is acquired distinctiveness?

If you can prove that a mark which is initially descriptive and/or lacks distinctive features is "well known as someone's special characteristic" in Norway, you will still be able to get the trade mark registered. This is called acquired distinctiveness through use.

How can you prove acquired distinctiveness?

There may be documentation that shows:

  • the brand's market share
  • the intensity of use of the trademark
  • how the brand has been marketed
  • how many in the trading circle perceive the trademark as an indication of commercial origin

The brand must be well known throughout Norway

In order for us to be able to register a trademark on the basis of acquired distinctiveness, the mark must be well known as someone's special characteristic throughout Norway for the goods and services for which you want the mark registered.

That is because a trademark registration gives an exclusive right that applies throughout the country. This therefore requires extensive use with geographical spread.

Distinctiveness acquired locally

A trademark may also have acquired distinctiveness locally through use. This does not mean that you can obtain a trademark registration, but it can justify a local exclusive right.

Read more about local distinctiveness further down the page.

Examples of brands that have been registered on the basis of incorporation:

Pizzabakeren i ren tekst (ordmerke)

THE PIZZA BAKER (word mark)

Registered for, among other things, pizza and take-away services related to pizza on the basis of incorporation. (Case no. 201805955).

Rørosmeieriet skrevet inni en sirkel (logo - kombinert merke)

RØROSMEIERIET (combined mark)

Registered for, among other things, dairy products on the basis of incorporation. (Case no. 201817285).

Bamsemums sett fra ulike vinkler i tredimensjonal form

Three-dimensional shape of a teddy bear

Registered for "filled chocolate" on the basis of incorporation. (Case no. 202007288).

More about how acquire distinctiveness can be documented

 

 

The mark applied for must be well known as someone's distinctive characteristic within the relevant trading circle before the application date. If priority is invoked, the priority day will be considered the submission day

How is the brand used?

Examples of this are a word mark, combined mark, three-dimensional mark or trading name.

The applicant or objector must show what is used or established by use. The evidence must in principle show the mark as applied for, but recent practice opens up the possibility that a mark may acquire distinctiveness also in conjunction with other elements, see European Court of Justice C-353/03, Have a Break (Have a Kit Kat), paragraph 32. This means that a three-dimensional mark in some cases can acquire distinctive character through use, even if use has occurred in conjunction with a word mark or a figurative element. This is typically the case where the mark consists of the shape of the product or its packaging and where they systematically bear a word mark under which they are marketed, see European Court of Justice C-24/05, Storck I, paragraph 59.

For which goods is the mark used or incorporated?

Protection through establishment by use or use is acquired for those products and/or services for which the mark is used or established by use. This must be apparent from the documentary evidence provided, see European Court of Justice T-262/04, Bic, paragraph 71.

Scope of use

Scope of use is understood to mean the intensity and duration of use.

Geographical extent of use

For use to be significant for the assessment of distinctive character, the mark must be used in large parts of the country. Local establishment by use can only justify a local exclusive right, and therefore does not provide a basis for registering the trademark with effect in the whole of Norway.

Trademarks established locally by use, on the other hand, may represent an obstacle to registration for a subsequent application.

As a general rule, most of the use/establishment by use must have occurred in Norway, but the documentary evidence of use or establishment by use abroad may be significant to the outcome of the case. The decisive factor is that use has led to the mark being perceived as a trademark in Norway. Documentary evidence showing only use or establishment by use abroad will normally not be sufficient.

The time when the use or incorporation must be completed

In order for a mark to be registered, it must have distinctive character both at the time of the application and at the time of registration, see Norwegian Law Gazette Rt. 2005. p.1601, Gule Sider, paragraph 41. This means that use must have taken place before the application was submitted, and this must be apparent from the documentary evidence supplied. No significance will be attached to use after this time. Exceptions can be imagined for market research and various statements made a short time after the time of application, because they will be able to demonstrate awareness of the mark prior to submission of the application.

In order to have an incorporated trademark registered, it must be documented that the trademark is "well known as someone's special characteristic" in Norway.

Sales figures, market share and marketing costs, advertising budget, etc.

These are the so-called "hard facts" which are well suited to show the extent of the incorporation or use and its geographical extent. Sales figures etc. have little value if there are no ratios showing market share, cf. C-25/05 Storck II of the European Court of Justice, premise 79. The figures that are documented must be seen in the context of the total market for the goods or services in question.

Media coverage, advertising material, brochures, advertisements, publications

This type of documentation is well suited to show how the brand is used and for which goods or services. It is important to date such information and show which newspapers or TV channels the mention or advertisement was taken from and how often the advertisement was printed or shown.

Market research

Such surveys can be very good evidence, but it is important that the questions asked are open (not leading).

Examples of open and good questioning: What do you associate with SWIX? What do you think of when you hear the word BIOLA?

Examples of leading questions: Do you know the brand GREEN TRAVEL? Do you know who is behind the brand 100% NATURAL?

Here it is assumed that we are talking about trademarks and not descriptive terms. The Norwegian Patent Office will place a certain weight on the survey, even if the questions should be somewhat leading, but surveys with open-ended questions will be given more weight. Furthermore, the investigation must be carried out in relation to the correct sales circle, cf. decision in R-1/2005-4, Hilti . Such investigations should be carried out before or immediately after the time of application.

Use of the brand on the internet

Examples: on the applicant's website, articles and advertisements on various websites, media coverage in online newspapers, etc

This type of documentation is suitable to show relevant trademark use if dated prints of the relevant website are submitted. The background for the requirement for dated printouts is that such websites can be continuously changing and a reference to a web address will therefore only show its use at the time of the visit. Furthermore, such web addresses can disappear or change, and thus lose their documentation value. A useful website for printouts of web pages is www.archive.org. By searching the "wayback machine" on this website, you can see the website as it was on different dates.


If, together with such printouts, documentation is obtained on the number of real visits (unique users) by the Norwegian sales circle in the period in question, it will further strengthen the case. Figures on the number of visits are important because otherwise we cannot know how many people have visited the website in question and seen the use of the trademark.

Dealer statements and witness statements

Such declarations are rarely received by the Patent Office and they are normally given little weight, cf. the EU Court's T-262/04 Bic , premise 78 et seq. and Lassen: Overview of Norwegian trademark law p. 221 (223).

In recent years, the Norwegian Industrial Property Office has seen an increased use of market research as part of documentation to support claims in trademark cases.

This is used as part of the documentation in connection with claims for use, incorporation and whether the trademark is well known (cf. the Trademarks Act section 14 third paragraph, section 3 third paragraph and section 4 second paragraph).

In cases where you wish to present a market survey, information on which criteria have been chosen and background material must appear together with the survey. It is particularly important to take into account the following criteria:

  • It should be stated which survey method has been used (postal interviews, telephone interviews, personal interviews, web-based solutions, omnibus surveys or BVA analyses).
  • The time of the survey; investigations carried out after the application submission date or registration date must show how the mark was perceived at the aforementioned earlier times.
  • In the survey, the questions must have been asked of the relevant target population, i.e. the relevant sales circle/average consumer of the goods or services.
  • In the target population, a representative sample must have been chosen (sampling frame based on scientific selection criteria), normally with a size of 1,000 to 2,000 people.
  • The design of the survey questions is important; these must be anchored in the legal assessment theme. The committee must understand what they are being asked about, for example distinctive features.
  • It is also important to show whether the questions are leading or non-leading, open or closed (fixed answer options), unaided or open to help. Leading or open-ended questions carry little, if any, weight.
  • The order of the survey questions; equally important is the order in which the questions are asked. If unhelpful questions are asked after helpful ones, they will lose their value.
  • Who has carried out the survey
  • General information about the findings; for example explanation of any graphs and figures that are not self-explanatory for the person who is to assess this material.

A survey carried out according to reliable scientific principles could be important information together with other documentation, such as market share, turnover costs, marketing costs, publicity and more.

Examples of open and good questioning: What do you associate with SWIX? What do you think of when you hear the word BIOLA?

Examples of leading questions: Do you know the brand GREEN TRAVEL? Do you know who is behind the brand 100% NATURAL?

Here it is assumed that we are talking about trademarks and not descriptive terms.

For further information see Monica Viken: Market research as evidence in trademark and marketing law. (Gyldendal 2012)

Trademarks that are descriptive and lack distinctivness cannot be registered on the basis of a locally acquired right. Such a locally incorporated right can only justify a corresponding local exclusive right, and is not the basis for a nationwide trademark registration.

This has been established, among other things, by the NIPO's second department in case no. 7220, Arendal's brewery.

Trademarks that have acquired distinctiveness locally have nevertheless protection against trademarks that can be confusingly similar. This means that you can prevent others from registering a trademark that you have established locally.

To prevent others from registering your locally established trademark, you can file a protest during application processing or an opposition within three months after the trademark has been registered.

If you submit a protest or an opposition, you must document that you have acquired an established right to the trademark through use. It is important to be aware that the Norwegian Industrial Property Office will then carry out its usual assessment of the likelihood of confusion when we assess whether a trademark is in conflict with an established trademark.

If the trademark has been registered for more than three months, the period of opposition has expired. In such cases, you cannot submit a claim that the registration is invalid on the basis of a trademark that has acquired distinctiveness locally.

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