Is your trademark application refused? This may be why.

The most common reason why a trademark application is rejected is that the mark is considered descriptive (lacks distinctiveness) or can be confused with previously registered rights.

It takes anywhere from three weeks and six to seven months for the Norwegian Industrial Property Office to assess a trademark application and prepare its first response. The assessment is based on the terms of the Norwegian Trademark Act. The desired result is that the application is approved as it is. The trademark will then be sent for registration and publication, and you have exclusive rights to its use. It may also happen that you receive a letter from the Norwegian Industrial Property Office, where they refuse all or parts of the application because it does not comply with the Trademark Act.

It is important to emphasize that hope is not lost even if you receive an initial provisional refusal from the Norwegian Industrial Property Office. You will have the opportunity to either erect  the deficiencies or submit an argumentation against the refusal. The response period is usually three months.

If your trademark application is provisionally refused, the first step is to understand the reason for the refusal. By understanding the basis for the refusal, you increase the chance of achieving final registration of the trademark in the next instance.

Refused trademark application can mean a lack of distinctiveness

A trademark is basically any identifier used in external communication, telling the market and customers who is behind the goods or services – the commercial origin. A trademark can be:

The Norwegian Industrial Property Office will reject the application if they believe the trademark lacks distinctive character. Distinctive character is defined as a trademark capable of distinguishing the goods or services of one business from those of another way of saying this is that the trademark has the ability to attract a certain amount of attention in the market, so that consumers who encounter the trademark remember it.

The most common reason why a trademark lacks distinctiveness is that it is considered descriptive. A trademark is considered descriptive if it may  be perceived as an indication of a characteristic, quality or similar aspects of the goods or services. For example, “SuperWindow” will be considered descriptive of the quality of windows.

If your application is initially refused, the Norwegian Industrial Property Office may still accept the application if they are convinced by argumentation of the contrary or you can document that the mark has acquired distinctiveness through use.

The Norwegian Industrial Property Office will also reject the application if the trademark has a form that follows from the nature of the product, is necessary to achieve a technical result or adds significant value to the product. An example of this could be a trademark that renders the product’s shape or appearance and applies to a product that is typically chosen by the consumer for this reason. The purpose of this provision is to prevent what should be protected through patents and designs from being covered by a potentially perpetual trademark right.

The trademark is in conflict with the rights of others

A trademark right means that no other entity may use the same or similar brand, which may cause confusion in business activities unless authorized by the rights holder. The Norwegian Industrial Property Office therefore rejects applications which are in conflict with already registered trademark rights.

If your trademark application is refused based on the fact that the trademark may be confused with someone else’s registered rights, it is possible to contact the holder of this right and ask for consent to registration. It is also possible to counter the refusal by arguing why there is no risk of confusion.

The trademark is in conflicts with public interests

Trademarks cannot be registered if they contravene the law, public order, or morals.

The trademark application will also be rejected if it may be misleading as to the nature, structure or geographical origin of the goods or services. Trademarks that without permission contain a weapon or other sign covered by the penal code, a state flag or anything that can be perceived as such a sign or flag are also not permitted.

The trademark application does not meet general conditions

It may also be that the application has other shortcomings, for example that the format of the trademark application itself does not meet the formal conditions. An application for a trademark must be submitted in writing to the Norwegian Industrial Property Office, and must include the applicant’s name and address, a reproduction of the mark and a list of the goods and services the trademark is sought to be registered. A set fee must also be paid to prevent the application from being dismissed.

Rejection of the trademark application – what now?

If the application does not meet the conditions of the Trademarks Act, the Norwegian Industrial Property Office shall notify the applicant and provide information on the effects of the deficiencies. The applicant is then given a deadline for comment and, if possible, correction of the deficiencies.

The preparation of a trademark is an important and strategic decision which requires considerable time and resources. The risk of the trademark application being rejected is reduced with thorough preparation. Our skilled advisers can assist you in assessing the registrability of a trademark. If your trademark application is refused, it is a good idea to seek professional help to decide your next step.