Pressure mounts to register black and white marks before adoption of new Trademarks Act

Parties intending to register a figurative mark (eg, a logo or device) in black and white in Norway may need to act fast before a change in the country’s Trademarks Act comes into effect at the beginning of March.

Norway’s new Trademarks Act

The Norwegian government approved a new Trademarks Act a few years ago – in part to bring the country’s trademark laws in line with conventions across Europe. Several technical difficulties led to a significant delay in its implementation but it now looks as if the Norwegian Industrial Property Office (Patentstyret) is preparing for the act to come into force in March.

The act promises a number of changes to Norway’s trademark laws, including:

• an update to the bad-faith provision as grounds for refusal;
• the dropping of a graphical representation requirement, which will likely assist in the registration of video or sound marks; and
• the introduction of a lack of genuine use or proof of use defence of these in oppositions, cancellations and infringement actions against older trademarks.

However, one amendment in particular – regarding the removal of broad protection in all colours for registered black and white marks – may require urgent action from trademark owners and those seeking to register in Norway. From March 2023, the scope of protection for black and white marks in the country will be limited only to the colours in the representation rather than all colours.

The lead up to the amendment

Convergence Programme 4 (CP4) – a 2014 discussion among European nations on the harmonisation of laws, interpretations and conventions – yielded agreement on a common practice to assess and register (on approval) only the colour or combination of colours featured in a trademark application. Implementation of the practice entailed protecting black and white marks only in those two colours. Norway chose to opt out of implementing the CP4 approach as it diverged from existing Norwegian Supreme Court case law (English Crown from 1932 and Spendrup’s from 1992), which specifically stated that black and white marks were to be afforded protection in all colours.

However, following both the CP4 discussion and European case law C-252/12 Specsavers, the legislative history of the changes in the Trademarks Act also acknowledged Norway’s upcoming status as a contracting party to the Singapore Treaty on the Law of Trademarks. The treaty comes into force in Norway on 1 March 2023 and states that if an applicant wants a colour protected as a particular feature of a mark, then this must be stated within the application itself.

Impacts on trademark owners and those hoping to register

Currently, any registered black and white marks in Norway or registered international marks with a designation in Norway featuring a registration date or subsequent designation date before 1 March 2023 will receive protection in all colours. Following this date, the amended Trademarks Act will bring Norwegian trademark law in line with CP4, and much of the rest of Europe, as well as the Singapore Treaty, ending the country’s blanket protection for black and white marks in all colours.

This change leaves owners of black and white marks in Norway, and those interested in registering them, with many factors to consider and discuss with Norwegian trademark attorneys.

For brand owners yet to register a mark, if a particular colour acts as an identifier for their brand, or their brand’s mark lacks distinctiveness without a specific colour, then registering in black and white could be counterproductive to their long-term IP and branding strategy. However, for brand owners still interested in registration, filing a mark in black and white before the law changes offers the added benefit of protection in all colours.

For many trademark owners, now is also the time to consider whether their current scope offers sufficient protection for their needs as 1 March quickly approaches.