Repeated trademark filings and use requirements

Introduction

Repeated trademark filings are continuously discussed in Norway and the EU as a portfolio tool to “refresh” rights that are approaching the five-year non-use vulnerability period (often referred to as “evergreening”). While refiling is not prohibited as such, it sits uncomfortably with the policy behind the use requirements: the register should reflect marks that are genuinely used (or credibly intended to be used), not indefinite paper monopolies. The key practical question is therefore when a repeated filing is legitimate portfolio management, and when it risks vulnerability.

Use requirements in Norway and the EU

In both Norway and the EU, registrations become vulnerable to (full or partial) revocation for non-use after a five-year grace period. Lack of use is a standard defense in oppositions and infringement disputes based on registrations that are subject to use requirements in both the EU and Norway. If use can only be evidenced for a narrow subset of goods covered by a non-use vulnerable registration, it can only be enforced based on protection for those goods.

Refiling as strategy: acceptable versus problematic

There are legitimate reasons to refile in both systems, for example where the brand has evolved, where the specification should be modernized, or where the business is expanding into clearly identified new products or service areas. Refiling can also be sensible where an earlier filing is defensible but poorly drafted, provided the new application is aligned with actual or near-term commercial plans and does not simply replicate unused breadth.

The risk increases when refiling appears primarily aimed at resetting the five-year grace period to avoid proving use, especially if the new filing mirrors the old specification and the proprietor then relies on the newer registration in oppositions or enforcement to sidestep proof-of-use challenges. In the EU, case law confirms that repeat filings can, in context, support a finding of bad faith, potentially leading to partial invalidity for the goods/services covered by the abusive purpose. Norwegian law likewise provides for invalidity where an application is filed in bad faith, and Norwegian practice is likely to be influenced by EU/EEA principles and persuasive EU case law when assessing abusive filing patterns.

Developments in Norwegian practice

In Norway, up to the alignment with EU legislation and practice on this topic in 2023, Norwegian case law and legal theory relied on a principle of “identification” between a repeat filing and an older registration when it came to calculation of the five-year grace period for use. This meant that a repeat registration that was less than five years old could not be enforced against younger marks and was at risk of being cancelled due to non-use if the first registration was vulnerable to non-use cancellation. The definition of repeat filings was broad. In fact, Oslo District court, in a ruling dated 7 July 2007, concluded that use requirements for several PRO ACTIV trademarks, including stylized versions in color, were to be counted from five years after the final grant date of the first word mark registration, even though not all of these registrations were more than five years old.

The court stated that while one cannot rule out the possibility that a repeat filing, depending on the circumstances, can be justified in such a way that identification should not take place, this was not the case in this matter.

The ruling was followed up in a decision by the Norwegian Industrial Property Office (NIPO) of 2 July 2019, where use requirements for a trademark registration for LITAGO (logo) was considered to apply from a previous registration for the word mark for LITAGO and the younger registration was partially revoked. However, upon appeal, the IP Appeal Board (IPAB) reached a split decision in favor of the trademark holder, concluding that the re-filing had a commercial rationale, essentially introducing a bad faith requirement for identifying successive trademark registrations with regard to use requirements.

Recent clarifications

In a decision dated 14 August 2024 (OP 2023/00474), NIPO annulled a registration for the mark GETFLIP based on likelihood of confusion with the opponent’s registered FLIP marks. In its appeal to IPAB, the applicant invoked non-use as defense against the opposition and argued that use requirements applied not only to the opponent’s registrations that were more than five years old, but also to the registrations that were formally still in the non-use grace period. In its decision of 9 April 2025 (24/00099), IPAB concluded that arguments of identification and intention to circumvent use requirements are relevant in an assessment of bad faith, but not as to whether a mark has been put to genuine use. IPAB further concluded that bad faith is not a relevant defense in opposition proceedings. Bad faith constitutes absolute grounds for refusal and must be submitted as a separate action.

Practical takeaways

Bad faith on the part of the trademark holder is not a valid defense in opposition proceedings and must be filed as a separate action. If such action is successful, the registration in question will be invalidated (ex tunc).

For brand owners, the safest approach is to make re-filings based on commercial rationale (expansion of goods, new visual profile, etc.) not solely to circumvent use requirements by refiling the same mark for the same goods every fifth year. Specifications should be limited to what is used or credibly planned. For third parties, repeated “refresh” filings can be a relevant attack angle, but the case must be built on concrete indicators: timing, repetition, overlap in goods/services, and lack of plausible use or intent.