top of page

Recent Case Notes & Commentary

COMMON LAW TRADEMARK? NO RIGHT WITHOUT PROOF OF USE

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


FORUM Claim Number: FA2012001925950


6 August 2023



Advokatfirmaet Danielsen & Co AS (the “Complainant”) is a firm of lawyers in Norway and Solar Harvest Ltd. (the “Respondent”) represented by Steinar Vigdel Kolnes, seems to have been a dissatisfied former client of the firm. The Complainant operates its website <https://www.advokat-danielsen.no/> The Respondent registered the domain name <http://advokat-danielsen.com/>, being the name of the complainant law firm, and put up several disparaging articles on the website pertaining to the Complainant, that are deeply critical of the Complainant’s services. Most of the articles allege that some of the practitioners of the law firm were either incompetent or unscrupulous. Steinar Vigdel Kolnes even warns against engaging the services of the law firm on <http://advokat-danielsen.com/>. Almost all the allegations, labelled ‘stories’ on the website, are in Norwegian, but a quick use of Google Translate, unravels a series of vindictive posts about the high level of dissatisfaction which the Respondent experienced while engaging the services of the Complainant. We will leave it to the reader to take the trip down the rabbit hole of perusing the angry posts, if they feel curious.


Coming to the matter, the Complainant had provided proof that Advokatfirmaet Danielsen & Co AS was a company registered in Norway. But registration of a company did not amount to proof of use of a trade or service mark. Moreover, the Complainant could not provide any evidence of the registration of a trade or service mark, in the form of official records or certificates.

The Norwegian Trademarks Act, 2010, recognises common law use of trademarks. Section 3 of the Act states, that ‘A trademark right is acquired without registration when the trademark is established by use. A trademark is considered to be established by use when and for as long as it is well known in the circle of trade in Norway for the relevant goods and services as someone’s sign.’ This is similar to the common law use view taken by several other countries like UK, Australia, India, Canada and USA. The common law use of trademarks operates on the ‘first-to-use’ principle to establish proprietary rights. But such use has to be continuous and uninterrupted from the time of adoption.


The Complainant was unable to provide any evidence of continuous and uninterrupted use of its trade or service mark, pertaining to ‘Advokatfirmaet Danielsen & Co AS’. Therefore, the Complainant could not establish that its name had acquired a secondary meaning in the market place, and could act a source identifier of its services.


The Complainant tried a different approach, relying on the domain name of the firm that it, the Complainant, had registered in 2000 and used to promote itself. But the panelist did not accept that evidence as being sufficient to attain secondary nature either, or establish common law use. 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 was unsuccessful in its action, and its case against the Respondent collapsed. There was no reason to consider the other elements. The disparaging website <http://advokat-danielsen.com/> is still up and running.


This case is once again, a cautionary warning to traders and service providers to make sure all your proofs of evidence of use are in order, so that it is easier to establish your goodwill and reputation in your trade or service marks.


QUESTION: How would you have decided this case? Do you think that the Complainant had proven its common law use rights in firm’s trade mark?

Recent Posts

See All

Comments