Establishment by use

The mark applied for must be well known as someone's special characteristic within the relevant circle of trade before the application date. If priority is claimed, the priority day will be considered as the application date. 

How is the trademark used? 

Examples of this are a word mark, combined mark, three-dimensional mark or secondary business sign. 

The applicant or opposing party 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 for 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 have the mark been used or acquired distinctiveness? 

Protection through establishment by use can be acquired for those goods and/or services for which the mark have been 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” means the intensity and duration of use. 

Geographical extent of use 

In order to claim 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 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 establishment by use 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, cf. 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, since they could demonstrate knowledge of the mark prior to submission of the application. 

In order to have a trademark registered by establishment of use, 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 able to show the extent of the establishment by use or use and its geographical extent. Sales figures etc. have little value if there are no ratios showing the market share, cf. C-25/05 Storck II of the European Court of Justice, paragraph 79. The figures that are documented must be seen in relation to the total market for the goods or services in question. 

Media coverage, advertising material, brochures, advertisements, publications 

This type of documentation is able to show how the trademark have been used and for which goods or services. It is important to date such information and show which newspapers or TV channels the mentioning 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 trademark GREEN TRAVEL? Do you know who is behind the trademark 100% NATURAL? 

Here it is assumed that we are talking about trademarks and not descriptive terms. The Norwegian Industrial Property 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 surveys must be carried out in relation to the correct sales circle, cf. decision in R-1/2005-4, Hilti. Such surveys should be carried out before or immediately after the time of application. 

Use of the trademark 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 changed 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. 

To the website www.archive.org 

Together with such printouts, documentation on the number of real visits (unique users) by the Norwegian sales circle in the period in question will strengthen the case further. Figures on the number of visits are important because otherwise we cannot know how many people that 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 Norwegian Industrial Property Office and they are normally given little weight, cf. the EU Court's T-262/04 Bic, premise 78 et seq. and Lassen: Oversikt over norsk varemerkerett (in Norwegian) 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, establishment by use and whether the trademark is well known (cf. Section 14, subsection 3, Section 3, subsection 3 and Section 4, subsection two of  the Norwegian Trademarks Act. 

In cases where you wish to present a market survey, information on which criteria have been chosen and background material must be shown 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; surveys carried out after the application date or registration date must show how the mark was perceived at the aforementioned earlier times. 
• In the survey, the questions must have been presented to 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 formulation of the survey questions is important; it must be anchored in the legal assessment theme. The sample group must understand what they are being asked about, for example distinctive character. 
• It is also important to show whether the questions are leading or non-leading, open or closed (fixed answer options), unaided or aided. Leading or aided questions carry little, if any, weight. 
• The order of the survey questions; equally important is the order in which the questions are asked. If unaided questions are asked after aided 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 will 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 questions: 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 trademarkGREEN TRAVEL? Do you know who is behind the trademark 100% NATURAL? 

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

For further information see Monica Viken: Markedsundersøkelser som bevis i varemerke- og markedsføringsrett. (Gyldendal 2012) 

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

This has been acertained, among other things, by the NIPO's second department in case no. 7220, Arendals bryggeri (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 the 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 it isassessed whether a trademark is in conflict with an established trademark. 

If the trademark registration was pubslished more than three months ago, 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.