Of models and makes

In 1999, the Norwegian Intellectual Property Office’s (NIPO) Appeal Board refused the mark L400 for class 12 goods (vehicles) in a decision that was initially ignored by NIPO legal advisors.

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 This new decision was all the more remarkable as the case concerned an opposition that had been withdrawn when an agreement was reached between the parties.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.