Use of a mark in a form differing in elements which do not alter its distinctive character

1. Use of a mark in a form differing in elements which do not alter its distinctive character Practice and examples from Norway Thomas Hvammen Nicholson

2. Overview • Legal Framework • Guidelines • Checklist • EU Case Law • Examples from Norway Use of a mark in a form differing in elements which do not alter its distinctive character

3. Legal Framework • Norwegian Trademark Act § 37(2): Use of the trademark (…) also includes use of the trademark in a form that differs from the form in which it is registered only in details that do not effect its distinctive character (…). = Article 10(1)(a) TM Directive Use of a mark in a form differing in elements which do not alter its distinctive character

4. Guidelines for the assessment • What are the distinctive elements of the registered mark? • Comparison with the mark used; is there a reasonable correspondence in scope of protection between the registered mark and the mark in use? Use of a mark in a form differing in elements which do not alter its distinctive character

5. Checklist • Addition or subtraction of words; are they distinctive or not? • Addition or subtraction of figurative elements; are they distinctive or merely decorative? • Additional distinctive elements; are the additional elements independent or not of the registered trade mark? • Have the distinctive elements of the mark been changed? Use of a mark in a form differing in elements which do not alter its distinctive character

6. EU Case Law Use of a mark in a form differing in elements which do not alter its distinctive character

7. EU Case Law Use of a mark in a form differing in elements which do not alter its distinctive character

8. Alterations of a word mark Class 5: Pharmaceutical preparations Use of a mark in a form differing in elements which do not alter its distinctive character

9. Figurative version of a word mark Class 20: Goods (not included in other classes) of tree or plastic. Use of a mark in a form differing in elements which do not alter its distinctive character

10. Figurative marks - modernization Class 25: Clothing Use of a mark in a form differing in elements which do not alter its distinctive character

11. Figurative marks - variations Use of a mark in a form differing in elements which do not alter its distinctive character

12. Figurative marks - variations Class 30: Beer; beverages. Use of a mark in a form differing in elements which do not alter its distinctive character

13. Several marks affixed on the same packaging Class 3: Cosmetics Use of a mark in a form differing in elements which do not alter its distinctive character

14. Use of house brands and sub brands Class 30: Margarine Use of a mark in a form differing in elements which do not alter its distinctive character

15. Use of an element which has become highly distinctive through use Class 36: Entire class Use of a mark in a form differing in elements which do not alter its distinctive character

16. Thank you! Use of a mark in a form differing in elements which do not alter its distinctive character