Recent Case Notes & Commentary

COMMON LAW TRADEMARK? NO PROOF

Advokatfirmaet Danielsen & Co AS v. Steinar Vigdel Kolnes / Solar Harvest Ltd

FORUM Claim Number: FA2012001925950

21 January 2020



The Complainant was a firm of lawyers in Norway and the Respondent seems to have been a former client of the firm and apparently not a happy one. It registered the domain name <advokat-danielsen.com> which of course is the name of the complainant law firm. Although it may not have been evidence in the case, we have translated via Google the opening of the first two paragraphs of the material the Respondent put on the website to which the domain name resolved. The text reads as follows: “As a former client of lawyer Per Danielsen, I would like to share my expensive experience…A little about my experiences.” From these extracts it seems a safe bet that the contents of the website were critical of the law firm’s services.”


The Complainant proved that Advokatfirmaet Danielsen & Co AS was a company registered in Norway. But registration of a company did not amount to proof of a trade or service mark. Moreover, the Complainant had not provided any evidence of the registration of a trade or service mark.


The Complainant had also not produced any evidence of a secondary meaning of the company name that might have shown the firm name was an identifier of the Complainant and its services.


The Complainant tried a different tack, namely relying on a domain name of the firm that it, the Complainant, had registered in 2000 and used to promote the firm. But the panelist did not accept that evidence as being sufficient either. He said: ”The fact of that domain name registration in 2000 and the nature of its current use are insufficient to establish that the name Advokatfirmaet Danielsen & Co has, through use, become a distinctive identifier which consumers associate with Complainant’s services. Complainant has offered no other evidence which could support of any such finding.”


Thus, the Complainant had not proved a trade or service mark and the whole case collapsed. There was no reason to consider the other elements.


Again, a salutary warning to make sure all your proofs of evidence are in order.


QUESTION: how would you have decided this case? Do you think that the complainant had proved a common law trademark in the firm’s name?