Norway: Feeling blue? - Have a chocolate!

On Monday 30^th June, 2025, the Norwegian Board of Appeal made a decision (Decision 25/00013) regarding the distinctive character of a single colour mark. At the time of filing, July 2^nd, 2024, there was only one prior ‘colour per se’ registration in Norway, namely for a single colour of red-orange for cigarette paper in the name of Imperial Tobacco Intellectual Property Limited.

The central legal issue of 25/00013 was whether the colour

could obtain protection under the Norwegian Trademark Act as a distinctive indicator of origin for porous milk chocolate from Orkla Confectionery & Snacks Norge AS (hereinafter “Orkla”).

Originally, Orkla applied for a slightly broader specification, porous chocolate, but later refiled for porous milk chocolate in Class 30. Porous chocolate is also known as aerated chocolate which is a type of chocolate that contains small air bubbles giving it a lighter texture and a unique mouthfeel. These air bubbles increase the surface area of the chocolate which can lead to a faster melt in the mouth and an intensified flavour experience. 

In the first instance, the Trademark Office, Patentstyret (hereinafter ‘TMO’), found that the market for porous chocolate included the entire population in Norway as the TMO considers that porous chocolate is an everyday commodity with a high turnover.

As for the blue colour applied for, the TMO considered it “not special” and in line with other commonly used colours such as brown for chocolate. The TMO considered the same factors that were emphasized by the Oslo District Court in their decision regarding the infringement of the same colour mark, but concluded, in contrast to the Oslo District Court, that the need to keep free must be considered to be particularly high

As indicated above, the distinctive character of the blue colour mark has – indirectly - been tried previously by the Oslo District Court, case No TOSL-2023-186489, when they ruled in a conflict case, June 7^th, 2024 - Orkla versus Mondelez Norge AS. The case concerned Orkla's claim to prohibit the marketing and sale of Freia Boble chocolate with its current packaging, along with a claim for compensation based on their right to the blue colour (Pantone 2144 C).  

The court found that the blue colour Pantone 2144 C had become established as a trademark for porous milk chocolate from Orkla throughout Norway. Mondalez was deemed to infringe Orkla’s trademark rights despite the fact that they had no registration at the time of the infringement case. Further, the packaging was also found to violate fair business practices under the Norwegian Marketing Act, § 25.

Therefore, the Court ruled that Mondelez was prohibited from marketing and selling Freia Boble with the current packaging. Additionally, they were ordered to recall the chocolate with the infringing packaging. For the damage done Orkla was awarded the significant sum of 20 million NOK (more than 1,7 M EURO) in compensation.

After having succeed in the infringement case against Mondelez, Orkla applied for registration of the colour mark and were to face a difficult time at the TMO for obtaining the registration. It took a very favourable market survey to establish the trademark right. The result of the market survey demonstrated that 81 % of Norwegian consumers associated the Pantone 2144 C with chocolate, following which the Board of Appeal approved the application for registration based on acquired distinctive character through use. Registration No. 337306 ensued.

Personally, we believe that it remains difficult to convince the Norwegian IP office and the Court if you apply for  ‘colour per se’ marks or, for example, text and device marks with descriptive text (If you know, you know!), but we recommend that the many clients (manufacturers?) keen on obtaining trademark registration for colours still consider the benefits of conducting a market survey in support of a trademark application before filing an application or take into consideration that it might be necessary file a new application.

Thus, there is no such thing as Monday blues within Orkla anymore. The taste of victory is sweet and Orkla wants more. Currently Orkla has another ‘colour per se’ application pending, application No. 202208657, (which has been suspended due to the outcome of the blue trademark case) for yellow for frozen pizza – Pantone 7408 C. For now, the rest of us are free to enjoy the blue ocean and blue sky this summer – without having to worry about trademark infringement …