We have previously asked whether Norway is the best pupil in class or if The Norwegian Industrial Property Office (NIPO), despite Norway's obligations according to the European Economic Area (EEA) agreement, fails to implement the same requirements of distinctiveness as the EU.

Based on our experience, the examiners of the NIPO uphold a distinctiveness assessment practice stricter and more rigid than in most other jurisdictions.

Our concerns regarding lack of harmonization on the area of distinctiveness have been communicated to the NIPO on several occasions, and also in connection with a customer satisfaction survey carried out by the NIPO in 2012.

The survey shows that we are not alone. On the contrary, both applicants without representatives as well as other trademark agencies have reported a lack of satisfaction with the NIPO's uniformity and predictability in handling trademark applications. According to the feedback given by the NIPO's customers (or users, as one might prefer), the NIPO's practice does not seem sufficiently harmonized with that of the rest of the EU authorities (particularly the OHIM), and they seem more stringent than the rest of the EU authorities.

The NIPO has now commented on the results of the survey. They claim to take the feedback very seriously, and have presented some of the work they have done and are doing, all in an attempt to improve the quality of their application processing on the trademark area.

So, does this mean that we will see a change in the NIPO's practice with regard to distinctiveness assessments? In other words, is there a harmonization in sight?

The NIPO starts by presenting some background figures:

In 2012, almost 15,000 trademark cases were processed. Of these, approximately 12,800 (86%) were granted protection in Norway, while approximately 1,800 cases were abandoned, and about 80 cases refused. A good percentage of the applications that were abandoned were probably met with objections by the NIPO, which may have been the reason why the applicants chose not to proceed with the applications. Nevertheless, the NIPO points out that as much as 86 % of trademark applications lead to registration. According to the NIPO, 92 % of international trademark registrations lead to registration, which is higher, however not significantly.

Further, the NIPO refers to an international Convergence Programme, launched by OHIM with national offices and user organisations in an attempt to reach common ground on a series of issues where IP offices in the EU have different practices.

As a participant observer, the NIPO has decided to participate in a number of projects under the Convergence Programme. Through thorough surveys of the practice of the participating countries, the goal is to identify any differences.

The NIPO refers to an example from a survey on absolute grounds - figurative marks, which was conducted among all participating countries and OHIM in 2012.

12 trademark offices found that the mark above was devoid of distinctive character, while 16 trademark offices found the mark to be inherently distinctive. This survey, which included about 100 different figurative marks, was examining to which extent the different member states, Norway and OHIM are harmonized with regard to distinctiveness assessment. A number of similar studies on other areas will expand the map in the future.

The NIPO concludes that they are well harmonized with the EU and its member states.

To sum up, we will therefore probably not see any significant change in the NIPO's practice on the area of distinctiveness assessments in the near future, as the NIPO seems quite content with its current practice, and has found this practice to be well harmonized with that of other EU authorities.

We will therefore continue to recommend our clients to file for protection of less distinctive trademarks in combination with distinctive elements, such as house marks or logos. As the NIPO does not record disclaimers for elements they may consider non-registrable, and the courts may have a different view on distinctiveness, this may at last provide some protection towards potential infringers.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.