UNFAIR COMPETITION AND IP JURISDICTION REPORT: NORWAY
Lill Anita Grimstad Bryn Aarflot
As an alternative to ordinary court proceedings in Norway, you may approach the Committee for the Control of Unfair Competition to decide whether a competitor’s actions comply with good business practice or not. Te decision is not legally binding, but most businesses will follow the panel’s recommendations and cease their infringing activity.
Te relevant legislation is the Norwegian Marketing Practices Act (Sections 25 and 30), which prohibits copying distinctive products belonging to others in a way considered unfair and/or potentially confusing. Section 25 is the more general provision, whereas Section 30 strictly concerns imitations. Te two provisions partly overlap.
Diplom-Is and Hennig-Olsen Is, Norway’s leading ice-cream companies, recently disputed the ice-cream containers for their products ‘Dream’ and ‘Please’. Te case was brought to the committee for a decision.
Diplom-Is was the plaintiff in this case, and argued that the ‘Please’ containers were infringing their ‘Dream’ containers, and that this represented a breach of the Marketing Practices Act Section 30, as it constituted an imitation. Additionally, it argued that the competitor Hennig-Olsen acted in conflict with good business practice among traders pursuant to Section 25.
Te ice-cream containers in question are shown opposite.
In its assessment, the Committee for the Control of Unfair Competition stressed that it was in ‘considerable doubt’ whether the design on the packaging for ‘Please’ was ‘coat-tailing’ and thus contrary to the requirement of good business practice among businesses. Te committee split into a majority of five and a minority of two.
Te majority concluded that the defendant’s use of its ice-cream container was in conflict with the Marketing Practices Act Section 25, which reads as follows:
“No act shall be performed in the course of trade which conflicts with good business practice among traders.”
Firstly, the majority of the members expressed that the design and location of the individual elements are not identical, and the design is not consistent. Tey held that the plaintiff’s container has a youthful and frisky expression, while the defendant’s has a more classic, mature expression. Despite these differences, the majority concluded that the overall impression was “conspicuously similar”, because the images were relatively consistent in proportion and structure. Further, they emphasised that the elements and
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“ THE RELEVANT LEGISLATION IS THE NORWEGIAN MARKETING PRACTICES ACT (SECTIONS 25 AND 30), WHICH PROHIBITS COPYING DISTINCTIVE PRODUCTS BELONGING TO OTHERS IN A WAY CONSIDERED UNFAIR AND/OR POTENTIALLY CONFUSING.”
use of colour were the same, and concluded that the overall impression of the ice-cream containers was “very similar”.
Te minority of the members, however, concluded that the defendant’s ice- cream container represents a container “distinctly different in its design”. Tey found that the packaging was standard packaging equipment and that the trademarks in question were obviously different. Regarding the use of the same colours, they found that the colour elements referred to the flavour, and consequently did not represent any originality that could be protected and monopolised for the plaintiff. Tey concluded that the design did not infringe the plaintiff’s ice-cream containers as the overall impression was different.
Te lack of any specific protection for trade dress makes the accumulation of protection through different types of IP rights advisable, provided that the requirements of each type of right are duly met. In order to obtain trademark protection in Norway, trade dress must be distinctive. Existing case law is restrictive with regard to granting protection to product shapes. Trade dress that is new and has individual character may obtain protection as a design without any need for evidence of distinctive character. However, this protection has a limited duration. Terefore, only a combination of various types of right will make it possible to preserve market exclusivity for a specific overall visual image, protecting mark owners from imitators.
Lill Anita Grimstad is head of legal & litigation and a partner at Bryn Aarflot. She can be contacted at:
lag@baa.no
World Intellectual Property Review March/April 2011 55
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