Descriptiveness and lack of distinctive character?
Get Your Kicks on Route 66 - or not?
Route 66 is the name of an abandoned stretch of road that went across the USA, from Chicago to California. It has been immortalized both by Nat King Cole's greatest success, (Get Your Kicks on) Route 66 and through John Steinbeck's vivid description of it as "Mother Road" in The Grapes of Wrath.
The Swiss company Tempting Brands AG were initially allowed registration of the mark ROUTE 66 by NIPO, but after a claim for administrative review was launched, both the NIPO and later KFIR found that the mark must be refused due to descriptiveness and lack of distinctive character.
The case was then brought before Oslo District Court where the State pointed out that the goods and services the mark was applied for was tourism-related, such as route planners, hotels, photographs and maps. It was therefore argued that Route 66 was descriptive and lacked distinctive character since the consumer will associate the mark with the travel destination Route 66, although they do not necessarily believe that the goods or the services originate from this location. It was also argued that there is a strong need to keep the term available for others to promote traveling along the road.
The court did not agree and says:
"Route 66 can not be described as a particular place, but is a stretch across the United States that can not be linked to the goods / services that the trademark is applied for. Although several of the services can be linked to travel, they are not linked specifically to Route 66 as the road is no longer in use, except on certain sections as tourist trail. The court's opinion is that this does not constitute a connection between Route 66 and the goods / services for which the trademark is applied. Furthermore, there is no reason to believe this will be the case in the foreseeable future.
On this basis, the court finds that "Route 66" has sufficiently distinctive character and is not descriptive in trademark legal sense. The name has a mythical connection to the old road link between east and west in the United States, but the goods the mark is applied for can not be linked to this road stretch in any meaningful way."
Tempting Brands AG was awarded NOK. 175,000 in legal fees.
Read more about the verdict here
For Acapo AS