IP strategy – precision over volume

From a practical standpoint, experience with trademark protection across jurisdictions highlights several recurring challenges that are not always sufficiently addressed.

It is often emphasized that rights holders should act early to secure trademark protection. While early action is important, this perspective does not fully account for a more systemic issue: 

Trademark frameworks can be vulnerable to opportunistic filings by third parties.

In practice, names or identifiers associated with individuals or emerging brands can be registered as trademarks by unrelated parties. Such filings may seek to capitalize on existing reputation or to establish leverage in future negotiations. These situations do not necessarily reflect a lack of awareness or preparedness on the part of the rightful holder but rather expose weaknesses in how trademark applications are assessed and processed.

Legal frameworks typically include safeguards intended to prevent the unauthorized registration of names or identifiers associated with others. For example, the Norwegian Trademarks Act section 16 letter c provides that a trademark may not be registered without consent if the mark "contains something that is liable to be perceived as another person’s name, stage name or portrait, unless it obviously refers to a person who is long dead."

This constitutes a so-called relative ground for refusal, as opposed to an absolute ground. In Norway, the Norwegian Industrial Property Office (NIPO) examines certain relative grounds for refusal. This differs from the practice of the European Union Intellectual Property Office (EUIPO), which does not examine relative grounds ex officio.

In our view, the NIPO should to a far greater extent identify and prevent third-party attempts to register the names of well-known individuals as trademarks. There have been several instances, both in Norway and the EU, where applicants have clearly sought to register such names as their own trademarks. The consequence of trademark authorities’ lack of attention to this type of conduct is that individuals with well-known names - even at a high level of public recognition – are not automatically protected against others registering those names as a trademark.

This reflects a systemic weakness in the trademark system. Where a name is widely recognized and clearly "liable to be perceived" as referring to a well-known individual, and a trademark application is filed for goods and services associated with the person, it should not proceed beyond the application stage. The NIPO and other trademark authorities should have procedures in place to identify such cases, instead of leaving it to the affected person to discover and challenge such violations. 

In many cases, reliance on the Norwegian Trademarks Act section 16 or similar provisions is not sufficient to address this type of conduct. Often, the central issue is whether a trademark application has been filed in "bad faith" which constitutes an absolute ground for refusal under the Norwegian Trademarks Act section 15 or similar provisions in the EU trademark framework. 

For example, in the well-known NEYMAR case (T 795/17), the EU courts ruled that an application to register the name "NEYMAR" as an EU trademark had been filed in "bad faith". The application had been submitted by a third party with no legitimate connection to the name, seeking protection for goods such as clothing and footwear. At the time of filing, Neymar da Silva Santos Júnior was already a well-known professional footballer with significant international recognition.The case illustrates that bad faith may be established where an application is not driven by a genuine intention to use the mark, but rather by a desire to exploit, block, or gain leverage over a third party associated with the name.

The EUIPO's practice demonstrates key factors in the assessment of "bad faith", including:

• The timing of the application in relation to when the relevant person’s name became known, and the extent to which the applicant may have been aware of this
   
• The applicant’s intention and the commercial logic behind the filing: whether there is a commercially rational basis for registering the mark, or whether the application is primarily motivated by a desire to block the rights holder or gain a negotiating position 
   
• Lack of use of the mark in accordance with the applicant’s stated purposes 
   
• The temporal proximity between the individual’s breakthrough and the timing of the registration 
   

European case law demonstrates that filings aimed primarily at blocking, exploiting, or leveraging another party's reputation may be rejected on this basis. These decisions underline the importance of maintaining the integrity of the trademark system and discouraging speculative behavior. The NIPO and other trademark authorities should make active use of the relevant provisions that address this type of undesirable conduct, also referred to as free-riding. 

A common misconception is that effective IP strategy is primarily about securing as many registrations as possible, as early as possible, and across as many jurisdictions as possible. In practice, this approach is rarely optimal.

It is neither feasible nor advisable to register everything at all times. Trademarks that are not put to genuine use risk revocation after five years. An overly broad registration portfolio can be costly, difficult to manage, and may ultimately undermine the credibility of the rights one seeks to enforce. A "register everything, always" approach is therefore neither a sound legal approach nor a sound business strategy and is unlikely to support effective brand building.

Building a brand requires a more sophisticated approach defined by precision and alignment with actual business needs. A well-founded IP strategy should, for example, take into account:

• Early and targeted action – securing the core classes and key jurisdictions at an early stage. 
   
• Appropriate scope – seeking protection where it is commercially relevant, not everywhere.
   
• Continuous monitoring – ensuring that third-party application filing attempts are detected at an early stage.
   
• Active and consistent enforcement – including oppositions, invalidation actions, and, where necessary, legal proceedings. 
   
• A relevant time horizon – taking into account the full lifecycle, including both current use and future brand development.

Finally, rights holders and their advisors should take IP strategy seriously. There is much to be gained and also avoided through early awareness and proactive management of rights. At the same time, the focus is often on building a professional profile and reputation rather than on legal protection in the early stages of a career.

As a consequence, the responsibility for addressing third-party free-riding should not rest solely with rights holders. Registration authorities, including the NIPO and the EUIPO, also have an important role to play. Provisions such as the Norwegian Trademarks Act section 16 letter c are designed to prevent the registration of names associated with well-known individuals by unauthorised parties. At the same time, provisions such as the Norwegian Trademarks Act section 15 on "bad faith" provides a basis for taking action against such conduct. 

Consistent and proactive application of such provisions, particularly at the examination stage, can reduce the need for costly and time-consuming disputes later on. Rights holders operating in both domestic and international contexts should be able to rely on a system that applies these provisions effectively, already at the application stage and not only in subsequent proceedings.