Documentation of establishment by use

An example of this is a word mark, combined mark, three-dimensional mark or secondary business characteristic.

The applicant or opponent must show what has been used or incorporated. In principle, the documentation must show the mark as applied for, but recent practice allows for a mark to acquire distinctive character also where the use has occurred in conjunction with other elements, cf. CJEU C-353/03, Have a Break (Have a Kit Kat), premise 32. This means that a three-dimensional mark can in certain cases acquire distinctive character through use, even where the 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 goods or packaging, and a word mark under which it is marketed has been systematically affixed, cf. CJEU C-24/05 Storck I, premise 59.

Protection through incorporation or use is only granted for the goods and/or services for which the mark has been used or incorporated. This must be evident from the documentation, cf. the ECJ's T-262/04 Bic , premise 71.

This refers to the intensity and duration of use.

For use to be significant for the assessment of distinctiveness, the mark must have been used in large parts of the country. A local incorporation can only justify a corresponding local exclusive right, and therefore does not provide a basis for registering the trademark with effect throughout Norway, cf. Second Division decision no. 7475, Louis Vuitton .

Locally incorporated trademarks, however, may constitute an obstacle to registration for a subsequent application. Read more about local incorporation further down the page.

As a general rule, most of the use/incorporation should have occurred in Norway, but documentation of use or incorporation abroad may be important for the outcome of the case. The decisive factor is that the use has resulted in the mark being perceived as a trademark in Norway. Documentation that only shows use or incorporation abroad will normally not be sufficient.

In order for a mark to be registered, it must be distinctive both at the time of application and at the time of registration, cf. Rt. 2005 p.1601, Gule Sider, premise 41. This means that the use must have occurred before the application was filed and this must be evident from the documentation. Use after this time will not be given weight. Exceptions can be made for market research and various declarations made shortly after the application date, because they may show knowledge of the mark before the application was filed.

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

This type of documentation is well suited to showing how the mark has been 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 came from and how often the advertisement was printed or shown.

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% NATURLIG?

Here it is assumed that the matter concerns trademarks and not descriptive terms. The Norwegian Industrial Property Office will place some weight on the questionnaire even if the questions are somewhat leading, but questionnaires with open-ended questions will be given more weight. Furthermore, the survey must be carried out in relation to the correct sales group, cf. decision in R-1/2005-4, Hilti . Such surveys should be carried out before or immediately after the application date.

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

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

If, together with such printouts, documentation is provided of the number of actual visits (unique users) by the Norwegian trade community during the relevant period, 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 relevant website and seen the trademark use.

The Norwegian Patent Office rarely receives such declarations and they are normally given little weight, cf. the EU Court of Justice's T-262/04 Bic , paragraph 78 et seq. and Lassen: Overview of Norwegian Trademark Law, p. 221 (223).