Of models and makes
In 2004, however, the board upheld the 1999 decision. This new decision was all the more remarkable as the case concerned an opposition that had been withdrawn when an agreement was reached between the parties. Amazingly, the board decided to continue the proceedings, addressing whether the subject mark, ‘S380’, was distinctive for class 12 goods. The refusal quickly became a severe headache for legal advisors and trademark prosecutors alike. Suddenly, NIPO had to review its administrative practice.
So the question was whether S380 was distinctive for class 12 goods. The board distinguished between ordinary sub-brands on the one hand and, on the other, signs that are only capable of distinguishing one producer’s different models, and not one producer’s goods from another’s. The decision argued that ‘it is common knowledge’ that combinations of letters and numbers are used in ‘many industries, including the car industry’ to distinguish the goods of individual manufacturers from each other.
This apparently affects the expectations of the average consumer, who only perceives the subject mark as an identifier for one of the holder’s different models. There was a need to keep such identifiers free for the use of others. The board generously left it to the legal advisors to decide in which other industries it was ‘common knowledge’ that such combinations were used in that way.
The administrative practice change that followed involved refusals of all marks consisting of a combination of letters and/or numbers for all goods in many different classes where the concept of ‘models’ could possibly be an issue. And not only that, for some unfathomable reason, NIPO also decided to refuse non-descriptive three-letter marks for vehicles, saying that they could be perceived as mere model indications.
“The need to keep indications free is nevertheless largely taken care of by the provisions prohibiting registration of descriptive marks. In addition, marks that are devoid of distinctive character must be refused, though non-descriptive marks will rarely be devoid of distinctive character.”
This practice unsurprisingly wreaked havoc in the Norwegian trademark world. Prosecutors argued over and over that the practice was in conflict with the principle that any sign could constitute a trademark and that twoletter signs had been registered for years. Claims were put forward that it was impossible to distinguish between ordinary sub-brands (separating one undertaking’s different products from each other) and ‘model indications’ (serving the exact same purpose). It was submitted that the rule was unpredictable, illogical and impractical, and that it had no counterpart in OHIM practice.
It was pointed out that it was generally appreciated that the letters B, M, and W could be combined in at least one way to make up a perfectly good trademark for cars, and that since combinations of letters and numbers were indeed commonly used in the car industry, consumers would expect them to refer only to one single producer of cars. Appeals were hurled at the board.
Some clarification was finally offered in case 7867 of May 2010, concerning the refusal of the mark ‘SR8’ for goods in classes 7, 9 and 11. The board noted that the criteria for assessing distinctive character are the same for all trademarks. However, some types of indications are used in a way in certain industries that may affect the assessment.
Descriptive abbreviations in the form of combinations of numbers and/or letters, for instance, seem to be common within the car industry, and the board referred to the L400 and S380 decisions. The need to keep indications free is nevertheless largely taken care of by the provisions prohibiting registration of descriptive marks. In addition, marks that are devoid of distinctive character must be refused, though non-descriptive marks will rarely be devoid of distinctive character.
The main point of this decision seems to be that when the board refers to L400 and S380, it is with regard to descriptive abbreviations—the word ‘descriptive’ was not mentioned in the prior decisions at all. The notion that all combinations of letters and/or numbers must be refused (also for vehicles) therefore seems to be abandoned and the need to keep such indications free is only directed at the descriptive ones.
(This of course corresponds with the public interest underlying refusals of descriptive marks in general.) It is however by no means certain that the board will begin to accept non-descriptive letter/number registrations for vehicles. It may be that the courts must have their say first, but most practitioners are confident that the board’s practice will eventually vanish.
Steiner Lie is an attorney in the trademark department at Bryn Aarflot. He can be contacted at: sl@baa.no
