Requirements for registration of a trademark
We can only register your trademark as long as it fulfills certain requirements. First and foremost, it must be distinctive and not be able to be confused with older registered rights. In addition, there are a few other requirements which you can read more about here.
Distinctiveness and risk of confusion
When you apply for a trademark registration, there are in particular two requirements that are deciding factors in assessing if we can register the trademark. Firstly, the trademark must have a distinctive character, which means that it must function as an identity marker that distinguishes your products from others'. Secondly, the trademark applied for cannot be so similar to an earlier mark that consumers will confuse the marks.
Misleading trademarks
The Norwegian Industrial Property Office cannot register marks that are misleading. A trademark is misleading if it misguides the consumer about essential aspects of the goods and services. This could, among other things, be trademarks that misinform about what the product actually is, what the purpose of the product is or what geographic origins the product has.
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.
A misleading trademark, is a mark that is misguiding regarding the products which it is applied for.
When the Norwegian Industrial Property Office assesses whether a mark is likely to mislead, we concider whether the information in the mark matches the list of goods. We are looking for any contradictions 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 is intended to mislead customers. We therefore do not see the mark as misleading if a non-misleading use of the mark is possible.
PLANTastic*
Applied for "beef meatballs" in class 29
The word PLANTastic gives the impression that the goods are plant-based, but the mark 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. Customers can therefore easily be misled into buying ordinary meatballs, when they want vegetarian "meatballs".
Conclusion : The mark is misleading.
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Lashes4ever*
Applied 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. Consumers can therefore make a mistake, and be misled by the mark.
Conclusion : The mark is misleading.
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ONLYGOLD*
Applied for "jewellery" in class 14.
The word ONLYGOLD for "jewellery" gives the impression that the jewellery is made of gold.
Since 'jewellery' covers jewellery made of gold, a non-misleading use of the mark is possible. As mentioned above, the Norwegian Patent Office does not cite the mark as misleading in such cases.
Conclusion : The mark is not misleading.
*fictitious example
Trademarks that are contrary to "morality" or "public order"
The Norwegian Industrial Property Office cannot register marks that are contrary to "morality" or "public order".
Marks that contravene "morality" are marks that may seem offensive, insulting or hurtful to people with normal perceptions and attitudes.
Marks that contravene "public order" are marks that violate general principles and standards of fundamental importance to the state and the society.
The Norwegian Industrial Property Office cannot take the applicant's possibly good intentions into account. We must base our assessment on how the trade mark in question generally will 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.
JÆVLA HOMO (English: Damn homo) – example of a trademark that is contrary to morality and public order
Applied for, among other things, "clothing" in class 25 and "entertainment services in class 41.
Case number : 201703254
The mark 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 was not something that the Norwegian Industrial Property Office could take into account.
The text JÆVLA HOMO is an ugly word of abuse about homosexuals. Maney people will find it offensive. 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".
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CANNABIS
Applied 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 mark is therefore contrary to basic principles and standards in the Norwegian society.
Conclusion : Contrary to "public order".
Trademarks that contain another person’s name or portrait
The Norwegian Industrial Property Office cannot register a trademark that is liable to be perceived as another person’s name, stage name or portrait, unless it obviously refers to a person who is long dead.
This is intended to protect specific persons and bearers of protected family names, so that they avoid seeing their name used commercially or associated with something they do not wish to be associated with. The same applies to portraits of specific persons, 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 obtain consent of all bearers to be able to use the name as a trademark.
HAALAND
Applied 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 be understood to point at 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 will be perceived as someone else's name.
Conclusion : Cannot be registered. The mark consists of something that is suitable to be perceived as someone else's name.
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Applied 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 Norsk Folkemuseum. The mark is suitable to be perceived as someone else's name.
But as Ibsen died in 1906, he is a "long dead person", and the grounds for refusal relating to marks designating specific persons do not apply.
Conclusion : The mark refers to a "long dead person".
Plant variety denominations in trademarks
The Norwegian Industrial Property Office cannot register a trademark consisting of a plant variety denomination. This applies if the trademark is applied for goods that are of the same or similar categories as the plant variety, typically fresh fruit and vegetables, seed corn, seeds and the like.
The plant variety denomination is the most precise term for 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 two varietis of the species «potato». The denominations tell us which variety we have within a certain species. The variety denomination has a specific 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"?
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It cannot be registered for "trees", "fresh fruit" and "apples" because «discovery» is a variety denomination for apple.
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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 denominations for plant varieties with plant breeders' rights in Norway and in states that are members of UPOV (The International Union for the Protection of New Varieties of Plants).
When processing applications, the Norwegian Industrial Property Office examines the database of the CPVO (Community Plant Variety Office) - Variety Finder, in order to find relevant variety denominations.
A plant variety denomination can also describe different goods. For example, the variety denomination «aroma» will be descriptive of apple juice, since this only tells us that the apple juice is made from the apple variety «aroma». (link to info on distinctive features?).
In certain cases, a plant variety denomination 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 made of discovery apples.
National flag or coat of arms in trademarks
You can use flags as decoration or as information on goods. However, there are laws and regulations that can limit this 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 need consent from the right authority in the country in question. For use of the Norwegian flag in trademarks, you need consent from the Ministry of Foreign Affairs. They are usually quite restrictive in giving such consent.
Many manufacturers use the Norwegian flag as decoration on products, for instance the Italian clothing brand Napapijri. However, they have not applied for any trademarks containing the Norwegian flag, and therefore have no such trademark registrations in Norway.
When it comes to the Norwegian national coat of arms, there are much stricter rules for use. The national coat of arms signals that you are a public authority. The rules for use of the national coat of arms are stipulated in royal decree of 20 May 1927, which, among other things, states: "The National Coat of Arms must only be used by State authorities in the exercise of their public activities." It is for instance illegal to use the national coat of arms on souvenirs and other such effects. The customs service do from time to time impound goods that are brought into Norway bearing the national coat of arms.
Red Cross
NIPO cannot register trademarks containing the emblem of the Red Cross. This emblem has a particularly strong protection, because it must 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:
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 Norwegian Trademarks Act. The grounds for refusal include, among other things:
- Marks that contain something that is likely to be perceived as the distinctive title of some one else's protected intellectual property, or which infringes someone else's intellectual property, photographic image or design.
- Marks that are applied for registration 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 in "bad faith" to submit continual applications with the intention of sidestepping the duty of use rules.
- Marks 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.
- Marks that infringe someone else's right here in the country to a designation that is protected by regulation under the Food Act.
Unregistered marks 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 mark in commercial activities.