Intellectual property | Covering a trademark with ink is not sufficient to avoid infringement under the Norwegian Trademark Act

In a recent judgement (HR-2020-1142-A), the Norwegian Supreme Court unanimously found that the act of importing unoriginal mobile phone screens on which the Apple trademark first had been applied, and then later covered by ink, amounted to trademark infringement. The covering could possibly damage the function of the trademark.
The Norwegian Supreme Court / Photo: Erik N.H. Krafft

According to section 4 of the Norwegian Trademark Act, a trademark registration confers on the proprietor an exclusive right to use the registered trademark. The equivalent to this provision is found in article 10 (3) of the Trademark Directive (2015/2436). The main question before the Supreme Court was whether the trademark was “used” without the consent of the proprietor. The imported screens were in all manners identical to Apple’s original screens. Just like the original screens, the imported ones had the Apple logo printed on the inside, where it could only be seen prior to assembling the glass. However, the Apple logo on the imported screens was covered by a type of removable ink. In ordinary use, the end user of the mobile phone would not see the Apple logo or the covering.

The Supreme Court unanimously ruled that one of the key functions of the trademark, namely to guarantee the origin of the products on which the trademark is applied, may suffer damage by the import of the mobile phone screens and that it could negatively impact further sales, even though the logo was covered by ink. The Supreme Court based its decision on relevant case law from the CJEU, in particular C-129/17 Mitsubishi. Even if the ink was not removed, the covering was noticeable, and could cause confusion regarding the origin of the product. Thus, it may not be clear to the relevant average consumer, here identified as professional salesmen and repairers, whether they were facing an original screen or a copy. According to the Supreme Court, such uncertainties alone were sufficient to establish a risk of damage to the functions of the trademark.

The decision builds on the principles established in the former Ensilox case (HR-2018-110-A), where a distributor had used a trademark belonging to their earlier supplier, on the packaging of products from their new supplier. The Supreme Court concluded that trademark protection, even if it typically protects the proprietor against confusion before or in connection with sales, also covers instances where damage to the functions of a trademark may occur only after the products have been sold.

The present judgment contributes to clarifications as regards which acts that may constitute “use” of a trademark within the meaning of section 4 of the Norwegian Trademark Act. To amount to a trademark infringement, the court must establish a clear possibility of damage to the functions of the trademark, inter alia to the guarantee or quality functions.

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