On 17 January 2018, the Supreme Court of Norway delivered a judgment on trademark infringement. The case facts were rather peculiar.

ENSILOX is a trademark of the company Addcon. The company Halfdan S. Solberg negligently put ENSILOX labels on some cans and containers containing the competing fish silage product Helm Aqua+. Solberg had notified their customers (end-customers) orally that they had changed to a competing product almost identical to Ensilox. The labelling of the product did not happen as part of a sale, but by mistake.

The customers were regular customers from several years back who would buy whatever silage product Solberg offered, regardless of whether it was Ensilox, Helm Aqua+ or any other product brand. Solberg claimed that the erroneous use of the trademark was not “use” in the trademark act sense and that it did not constitute trademark infringement because the trademark’s so-called «functions» would not be harmed by this use.

Before the Supreme Court, Solberg also claimed that trademark protection under the Trademark Act only applies in a sales situation and not when the trademark is used after a sales agreement has been entered into.

This won Solberg support in both the district court and the appellate court, but the Supreme Court was of another opinion. After going through CJEU case law on the functions of a trademark, particularly the so-called guarantee of origin function, the Supreme Court concluded that the trademark had been infringed and ordered Solberg to pay remuneration, damages and full case costs for all three courts.

The Supreme Court dismissed that the trademark right only applies if the trademark is used in a sales situation. It further stated that infringement is the case even if the use has not harmed the trademark. It is sufficient that there is «risk that the trademark’s functions are affected by the use in question». The latter is not new, but it is worth noticing that the Supreme Court takes a strict approach with regard to when unauthorized use of a trademark do not constitute a risk of harm.

Even though customers had been notified, the Supreme Court found inter alia that no evidence had been presented supporting the fact that all customer employees knew about the change of product, or that those who had received the information were conscious of it upon reception of the erroneously marked goods. The use of ENSILOX was enough to create uncertainty or confusion and that is sufficient for ascertaining that there is risk of harm to a trademark.

For all practical purposes, one may deduce from the judgment that trademark infringement is the case if the objective circumstances of the actual trademark use are not such that they rule out the possibility of the use being incorrectly interpreted as a connection between the product and the trademark holder.

The Supreme Court lists several examples of use that do not involve trademark infringement, for example the Fiskå Mølle (Rt-1975-951) judgment which was delivered before currently applicable sources of law like the EU trademark directive and the CJEU’ s practice. Lassen/Stenvik: Trademark law emphasizes that the justification in the Fiskå Mølle case is no longer correct, but that the result very well might be. The Supreme Court accepts this analysis.

It seems that the justices of the Supreme Court in the Fiskå Mølle case, without directly referring to the term, partly substantiate the result with the trademark guarantee of origin function, even though the term was not «invented» until a couple of years later, by the Court of Justice of the European Union in the so-called Hoffmann-La Roche judgment (1978), cf. Supreme Court premise (54).

Barrister Håkon Bleken (H) represented Addcon in this case.

Read the judgment here (Norwegian).