Distinguishing between objection, opposition and administrative review in Norwegian trademark law

Introduction

If you believe that a trademark application filed in Norway should not be accepted, you may file an objection with the Norwegian Industrial Property Office (NIPO). If the trademark has already been registered, you may either file an opposition or request administrative review. This article provides an explanation of the different procedures, and an overview of pros and cons with choosing one over the other.

There may be various reasons for reacting against a trademark. The trademark may for example be identical or confusingly similar to your earlier trademark or company name and is used for the same or similar types of goods or services. Another important reason may be that you consider the trademark to be descriptive or generic. Descriptive and generic words and signs cannot be monopolized and should remain available for commercial use.

Objection

An objection against a trademark application may be filed at any time from the filing of the application until the NIPO has completed its examination. The objection may be based on i.a. your prior trademark rights, or on the mark being descriptive or generic. There are no official fees for filing an objection , but you cannot claim recovery of your legal costs from the other party even if your objection is successful.

If the objection is based on the mark being descriptive or lacking distinctiveness, the NIPO will assess the distinctiveness as of the filing date or priority date of the application. This differs from the assessment in opposition and administrative review proceedings.

An objection does not give you party status, and the NIPO will not notify you if the objection is successful. You will, however, be notified if the objection is not successful and the mark proceeds to registration. In such case, you may file an opposition against the registration.

Opposition

Once a trademark registration has been published, anyone may file an opposition. The opposition must be submitted in writing to the NIPO within three months from the publication date. There are no official fees for filing an opposition, but you cannot claim recovery of your legal costs from the other party.

The opposition must be reasoned, for example by arguing that the mark is descriptive or confusingly similar to your prior rights. In an opposition you may also request that the registration is transferred to you, provided you can prove that you are the rightful owner of the mark. Your prior rights can for example be a registered trademark or an unregistered trademark right established through use. A trademark right is established through use when, and for as long as, the mark is well known as someone’s special characteristic for the relevant goods/services. Local use-acquired rights, i.e. a trademark which is only well known in parts of the country, can be sufficient in opposition proceedings.

Upon receipt of the opposition, the NIPO will notify the proprietor and allow them to respond. The parties are also given the opportunity to suspend the opposition proceedings if they prefer to negotiate an amicable settlement.

If the opposition is based on the mark being descriptive or generic, the relevant date for the NIPO’s assessment will be the date on which the opposition is filed. If, for example, the mark was descriptive at the time of filing but has later acquired distinctiveness through use, the opposition will not succeed.

If you base the opposition on prior rights in a trademark or company name, and your sign was registered more than five years ago, the other party may demand that you prove genuine use of your mark during the last five years. The Trademarks Act imposes use requirements, implying that rights in a trademark or company name may be forfeited if the sign has not beengenuinely used during the last five years. If you cannot prove that you have used your sign during the five-year period preceding the application or priority date of the mark you are opposing, the NIPO may reject the opposition.

If the NIPO concludes that the trademark was registered in breach of statutory requirements, the registration will be revoked in whole or in part. The NIPO’s decisions in opposition proceedings may be appealed before the Board of Appeal for Industrial Property Rights.

Administrative review

Administrative review is a procedure for those who believe that a trademark registration is invalid or should be cancelled. It is intended as an efficient alternative to court proceedings, and the NIPO is required to ensure good progress in the handling of the case. Administrative review is subject to somewhat different requirements than objections and oppositions. You must demonstrate a legal interest in the case (a genuine need to have the registration invalidated) and you must pay an official fee, currently NOK 4 000.

There is no fixed deadline for filing a request for administrative review. You may also claim reimbursement of your legal costs from the other party if you win, unlike in objections and oppositions.

As with objections and oppositions, a request for administrative review may be based on the mark conflicting with your earlier rights, or on the mark being descriptive or generic. Administrative review is also relevant in other situations that are not practically solved through an objection or opposition, as discussed below.

If the request for administrative review is based on the mark being descriptive or lacking distinctiveness, this must be established at the time the request is filed. If, for example, the mark was descriptive at the time of filing but has later acquired distinctiveness through use, the request will not succeed.

If you base the request on rights in an earlier sign that was registered more than five years ago, the proprietor may, as in opposition cases,request that you submit evidence of genuine use. In both cases, the assessment is whether you have used your mark during the five years preceding the filing date or priority date of the mark you are challenging.

If you base the request on earlier unregistered trademark rights established through use, the trademark rights must be established in the whole country. If only established in a limited part of the country, the request for administrative review will not succeed.

As noted, certain types of claims are practical through administrative review but not through objection or opposition. This includes inter alia cancellation due to genericide. Genericide means that a trademark has become a common term in the relevant trade and has therefore fallen into the public domain. A well-known example is the former trademark THERMOS. You may also request cancellation if the mark was registered more than five years ago and has not been genuinely used during the last five years. You may further request cancellation if the proprietor is unknown or no longer exists, for example because the trademark is owned by a liquidated company.

The NIPO’s decisions in administrative review cases may be appealed before the Board of Appeal for Industrial Property Rights.

Which route should you choose?

The choice between an objection, opposition and administrative review is primarily relevant if you want to challenge a trademark that conflicts with your sign or is descriptive or lacks distinctiveness. Below is a review of the pros and cons of these options in different scenarios.

The most obvious difference is timing. An objection must be filed before the mark is registered, whereas an opposition must be filed no later than three months following the publication date. If you need more time to assess the case or only become aware of the registration after expiry of the opposition deadline, an administrative review is a good alternative.

Another important difference is that you may claim recovery of your legal costs if you succeed in administrative review, whereas this is not possible in objections and opposition proceedings. If you feel confident that your claim will be successful, you may therefore have more to gain by requesting administrative review. On the other hand, you may have to cover the other party’s costs if you lose. Objections and oppositions involve no official fees or any risk of being ordered to pay the other party’s costs. If your claim appears uncertain, an objection and/or opposition may thus be the safer route.

The remaining differences require more detailed considerations. One potentially important factor is whether the later mark may acquire distinctiveness over time. If you file an objection, distinctiveness is assessed as per the filing date or priority date. For opposition and administrative review, distinctiveness is assessed as per the time you file the opposition or request. If you are concerned that the younger mark may acquire distinctiveness through use, there is no reason to wait before reacting, and an objection or opposition may be the better choice.

If you are unsure whether you have sufficient legal interest, it is usually safer to file an objection and/or an opposition. Administrative review requires that you demonstrate a legal interest in the case. In practice, this requirement rarely poses any problem. If the request is based on the mark conflicting with your earlier rights, you will have sufficient legal interest. If the request is based on the younger mark being non-distinctive or descriptive, it will usually be sufficient to demonstrate an interest in being able to use the term yourself for the relevant goods or services.

If you base your claim on rights in a use-acquired trademark, the differences between objection, opposition and administrative review can be decisive. If your mark is only established in a limited part of Norway, you may file an objection or opposition on such grounds, but you cannot use such limited rights as basisfor an administrative review.

A key factor distinguishing objections from oppositions and administrative review is whether you have fulfilled the use requirement. If you file an objection based on your earlier registered right, the NIPO will consider your rights without assessing whether or not you have fulfilled the use requirement. If the applicant wishes to challenge your rights, they must file a separate cancellation action against your registration. If, however, you file an opposition or request administrative review against a registered mark, the other party may defend by requesting that you submit evidence of genuine use. In all cases, you should be mindful of the use requirements, as you may risk losing your rights if you have not used your sign during the last five years. However, the risk is somewhat lower if you file an objection, because the other party must take the additional step of filing a separate cancellation claim.

As in many other contexts, the choice between the different options is largely determined by time and costs. In certain cases, however, there may also be other strategic factors to consider when choosing between objection, opposition and administrative review. Such considerations can be decisive for the outcome, and it may therefore be wise to take a closer look at the nuances before you make your decision.