Other requirements for a trademark

There are more requirements than distinctiveness and risk of confusion that can be an obstacle to getting a trade mark registered. Here you get more information about some of these somewhat less common registration obstacles that can sometimes lead to the rejection of a trademark application.

Distinctiveness and risk of confusion

When you apply to have a trademark registered, there are often two requirements that can be decisive for whether you can get the trademark registered or not. Firstly, the trademark must have a distinctive character, which means that it must function as an identity marker that distinguishes your products from others'. Second, the trademark applied for cannot be so similar to an earlier mark that consumers will confuse the marks.

Misleading trademarks

The Norwegian Patent and Trademark Office cannot register marks that are misleading. The fact that a brand is misleading means that it misleads the consumer about essential aspects of the goods and services. This could, for example, be brands that misinform about what the product actually is, the purpose of the product, where in the world the product comes from, or the like.

Even if a trademark is so similar to someone else's trademark that it gives the impression of a commercial connection between the trademarks, this mark is not misleading. In such a case, there is a risk of confusion.

By misleading we mean brands that mislead with regard to the products for which registration has been applied for.

When the Norwegian Patent and Trademark Office assesses whether a mark is likely to mislead, we assess whether the information in the mark matches the list of goods. There must therefore be a contradiction between the mark itself and the goods/services the mark is to be used on.

There is no reason to assume that anyone is applying for a trademark that actually intends to mislead customers. We therefore do not allege deception if a non-deceptive use of the mark is possible.

PLANTastic*

Searched for "beef meatballs" in class 29

The label PLANTastic gives the impression that the goods are plant-based, but the label is applied for products made from meat.

These are goods that can be perceived as belonging to the same category, the goods can be almost identical in appearance, and they can be located in the same area of the grocery store. It is therefore quickly done that customers are misled into buying ordinary meatballs, when they want vegetarian "meatballs".

Conclusion : The label is misleading.

Lashes4ever*

Searched for "lipstick" in class 3

The word LASHES gives the impression that the goods relate to eyelashes, but the mark is applied for lipstick. Cosmetic products for eyelashes and lipstick may come in similar packaging and be sold at the same outlets. There is therefore a chance that the consumer will make a mistake, and thus be misled by the brand.

Conclusion : The label is misleading.

ONLYGOLD*

Searched for "jewellery" in class 14.

The label ONLYGOLD for "jewelry" gives the impression that the jewelry is made of gold.

Since the description 'jewellery' covers jewelery made of gold, a non-deceptive use of the mark is possible. As mentioned above, the Norwegian Patent Office does not allege deception in such cases.

Conclusion : The label is not misleading.

*fictitious example

Trademarks that contravene "morality" or "public order"

The Norwegian Patent Board cannot register marks that are contrary to "morality" or "public order".

Brands that contravene "morality" are brands that may seem offensive, offensive or hurtful to people with normal perceptions/attitudes.

Brands that contravene "public order" are brands that violate general principles and standards of fundamental importance to the state and society.

The Norwegian Patent Office cannot attach importance to the applicant's possible good intentions. 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.

Damn homo - example of a trademark that goes against morality and public order

Applied for, among other things, "clothing" in class 25 and "entertainment services in class 41.

Case number : 201703254

The brand JÆVLA HOMO was applied for by NRK, and was the name of a documentary series which was to investigate why it is still difficult to be gay in Norway.

As mentioned, the applicant's good intentions are not a relevant consideration when assessing whether a mark is contrary to "morality" and "public order". The fact that NRK had good intentions with the trademark application and the use of the expression JÆVLA HOMO could not be emphasized by the Patent Office.

The text JÆVLA HOMO is an ugly slur about homosexuals. It will therefore be offensive to many. In Norway, it is also a fundamental and statutory principle to promote equality and prevent discrimination on the basis of sexual orientation.

Conclusion : Contrary to "morality" and "public order".

Cannabis.png
Cannabis applied for as a trademark

CANNABIS

Searched for, among other things, "chocolate" in class 30.

Case number : T‑683/18

Cannabis is an illegal drug, due to the fear of health damage and addiction. The brand is therefore contrary to basic principles and standards in Norwegian society.

Conclusion : Contrary to "public order".

Trademarks that contain someone else's name or image

The Norwegian Patent and Trademark Office cannot register trademarks that are suitable to be perceived as someone else's name, stage name or portrait, unless it is clearly intended to refer to a long-deceased person.

This should be a protection for certain persons and bearers of protected family names, so that they do not have to see their name used commercially or be associated with something they do not want to be associated with. The same applies to portraits of specific people, which you cannot register as a trademark without consent. The limit for protected surnames is 200 bearers, and if you do not have the name yourself, you must have the consent of all bearers to be able to use the name as a trademark.

HAALAND

Searched for, among other things, "clothes" and "football boots" in class 25.

Case number : 202211804

Erling Braut Haaland is considered one of the world's best footballers. When the name HAALAND is used on goods such as "clothing" and "football boots", this will only be understood to designate the footballer Erling Braut Haaland.

When this mark is applied for by someone other than Erling Braut Haaland himself, the mark must be refused on the basis that it consists of something perceived as someone else's name.


Conclusion : Not registrable. The brand consists of something that is suitable to be perceived as someone else's name.

Henrik Ibsen's signature
Henrik Ibsen's signature

Searched for, among other things, "stationery" in class 16 and "suitcases" in class 18.

Case number : 200502418

The mark consists of the signature of Henrik Ibsen. The applicant in this case was the Norwegian Folk Museum. The brand is basically suitable to be perceived as someone else's name.

But as Ibsen died in 1906, he is a "long deceased person", and the grounds for refusal relating to marks designating specific persons do not apply.

Conclusion : The mark refers to a "long deceased person".

Plant variety names in trademarks

The Norwegian Patent Office cannot register a trademark consisting of a plant variety name. This applies if the trademark is sought to be protected for goods that are of the same or closely related species as the plant variety, typically fresh fruit and vegetables, seeds, seeds and the like.

The plant variety name is the most precise designation of a plant in biological systematics, and indicates a subgroup of a species. For example, "aroma" and "discovery" are two varieties of the species "apple", while "folva" and "pimpernell" are the cultivar names of two potato varieties. The names describe which variety we are facing, within a specific species. The variety name has a completely separate function, and it cannot simultaneously function as a trademark.

Is it possible to register the trademark DISCOVERY for "trees", "fresh fruit", "fresh vegetables", "potatoes" and "apples"?

  1. It cannot be registered for "trees", "fresh fruit" and "apples" because discovery is a variety name for apple.

  1. However, because neither "potatoes" nor "fresh vegetables" are apples or closely related to apples, the trademark can be registered for these goods.

The rule applies to variety names for plant varieties with plant breeders' rights in Norway and in states that are affiliated to UPOV (The International Convention for the Protection of New Varieties of Plants).

When processing applications, the Norwegian Patent Office examines the database of the CPVO (Community Plant Variety Office) - Variety Finder, in order to find relevant variety names.

Plant variety names can also be descriptive of specific goods. For example, the variety name aroma will be descriptive of the item apple juice, since this will exclusively tell that the apple juice is made from the apple variety aroma. (link to info on distinctive features?).

In certain cases, a plant variety name can also be misleading. If the trade mark is DISCOVERY and the application concerns "juice of aroma apples", consumers will be misled into thinking that the juice is instead of the discovery variety. (link to info on deception?)

Read more about plant breeders' rights

Flag or national coat of arms in trademarks

In order to register a trademark that contains a flag (Norwegian or foreign national flag), you must have consent from the right authority in the country in question.

You can use flags to decorate or as information on goods. However, there are laws and regulations that can limit its use, such as the Marketing Act's ban on misleading marketing. For example, it will easily be perceived as misleading if you sell "Swedish herring" with a Norwegian flag on it.

In order to register a trademark that contains a flag (Norwegian or foreign national flag), you must have consent from the right authority in the country in question. The same applies to other official symbols such as the national coat of arms and the municipal coat of arms. It is the Ministry of Foreign Affairs that gives consent to the use of the Norwegian flag in trademarks. They are generally quite contrary to giving such consent.

Many manufacturers use the Norwegian flag as decoration on products, including the Italian clothing brand Napapijri. However, they would not have received consent from the Ministry of Foreign Affairs to register such a trademark containing the Norwegian flag.

When it comes to the Norwegian national coat of arms, there are much stricter rules for use. Using the national coat of arms signals that you are a public authority. The use of the national coat of arms is stipulated in a royal decree of 20 May 1927, which, among other things, stipulates: "The National Coat of Arms must only be used by the State authorities in the exercise of their public activities." It is illegal to use the national coat of arms on souvenirs and other effects. The customs service from time to time seizes goods that enter Norway with the national coat of arms on them.

Red Cross

NIPO cannot register trademarks containing the emblem of the Red Cross. This has a particularly strong protection, because it should be able to function as protection in connection with helping the sick and wounded in war. This has its origins in the Geneva Conventions. The protection applies to all goods and services.

International/intergovernmental organisations' names, emblems, etc

Examples:

Flag_of_the_United_Nations.png
UN flag
Official emblem of the EU
Official emblem of the EU

Other reasons for refusal

There are also a number of other reasons for refusal. These can be found mainly in Sections 14, 15 and 16 of the Trade Marks Act. The grounds for refusal include, among other things:

  • Marks that the mark contains anything that is likely to be perceived as the distinctive title of another's protected intellectual property, or infringes on another's intellectual property or photographic image or design.

  • Marks that are sought to be registered in "bad faith". This is a broad provision that takes various considerations into account. The provision prevents, among other things, the registration of someone else's unregistered trademark for purposes that are contrary to good business practice. It also safeguards public interests. For example, it would be contrary to "bad faith" to submit repeated new applications with the intention of circumventing the duty of use rules.

  • Brands that are excluded from registration pursuant to regulations under the Food Act on the protection of designations of origin or geographical designations or traditional designations for wine.

  • Brands that infringe someone else's right here in the country to a designation that is protected by regulation under the Food Act.

Unregistered brands may be used

The reasons for refusal mentioned on this page apply to the registration of trademarks, not to the use of marks. Even if a mark cannot be registered, it does not necessarily mean that you cannot use the mark. However, there are many advantages to having a registered trademark, because this gives you a documented exclusive right to use the brand in commercial activities.