Trademark prosecution in Norway

What is the legislative framework for trademark prosecution in Norway?

The Trademark Act of 2010 (Norwegian: “varemerkeloven”) regulates the registration, administrative opposition, cancellation and invalidation proceedings regarding trademarks. In addition to the formal procedural requirements, the material requirements for registration of a trademark are also found here.

The Act incorporates the EU Trademarks Directive (2008/95/EC) into Norwegian statutory law. While Norway remains an EU non-member, the Norwegian membership to the EEA involves the incorporation of a substantial amount of EU legislation. Accordingly, EU case law will carry significant weight when interpreting the Trademark Act, cf. case HR-2016-2239-A Route 66.

The Norwegian parliament has enacted an amendment to the Trademark Act to conform with the latest EU Trademarks Directive (2015/2436).

How to register a trademark under Norwegian legislation?

The Norwegian Industrial Property Office (NIPO) is responsible for the administrative procedures leading up to and following a formal trademark registration. This includes the registration itself as well as possible third-party objections or oppositions during the registration process.

An application for a trademark must be filed in Norwegian. Should additional documentation be required, NIPO will accept also Danish, Swedish and English. If the application is filed in an incorrect language, NIPO will grant the applicant a limited time to submit a translation.

Under Norwegian legislation, both physical persons and legal entities may submit an application for a trademark.

To prevent official objections or oppositions, an applicant may search the trademark database before filing the application The NIPO offers a search engine enabling pre-application examination into similar marks..

The final decision handed down by NIPO may be appealed to the independent IP Appeal Board. The Appeal Board’s decision may in turn be appealed before the regular court systems.

Once an application has matured into registration, the registration will remain valid for a 10 year term. Registrations may subsequently be renewed for additional 10 year terms.

Are there use requirements for trademarks under Norwegian legislation?

The Trademark Act requires genuine use of the trademark within five years following the registration, or, in the case of dormancy, no more than five years of suspended use. Genuine use will generally mean using the trademark with the purpose of gaining or maintaining a market share within the relevant public. The legislative objective is to limit purely defensive registrations, devoid of any legitimate mercantile intent. Failure to initiate genuine use of a trademark may result in invalidation through administrative review. See more on administrative review below.

There is no clear precedence from the Norwegian Supreme Court as to which extent of use meets the legal requirement. Accordingly, practice from the EUCJ is relevant when deciding on whether the mark has been put to genuine use on the Norwegian market, e.g. C-40/01 Minimax, C-259/02 La Mer Technology and C-416/04 Vitafruit.

Is an attorney or agent required for the application procedure?

There is no formal requirement for foreign applicants to make use of a Norwegian agent during the registration process. However, seeking assistance from a qualified counsel is highly advised.

If an agent is used, the NIPO will require that a Power of Attorney is submitted. The PoA may be submitted at any point during the examination process.

Are Norwegian trademark applications and registrations publicly available?

All information included in the application will be publicly available, effective from the day the application is filed. There is no option to withhold the application from the public, neither in part nor in its entirety.

Do unregistered trademarks enjoy protection under the Norwegian Trademark Act?

Trademark rights may be obtained through registration, or by establishing such rights through use. Although both options are equal in terms of protection and enforcement, registration is undoubtedly the safer and more efficient option.

Rights in a trademark through use alone are established if, and as long as, it is considered well known as someone’s trademark by the relevant consumers. Note that the “well known” criteria does not coincide with the “well-known” criteria for famous marks.

There are strict requirements for documenting use-acquired right in trademarks. Following the Supreme Court case Rt. 2005 s. 1601 Gule Sider, simply spending large amounts on resources in marketing is not sufficient. In order to establish protection, a concrete knowledge in the relevant public must be demonstrated.

To some extent, the Marketing Control Act may provide supplementary protection against unlawful imitation and unfair business practices.

Do famous trademarks enjoy extended protection in Norway?

Holders of famous and well-known trademarks enjoy an extended protection. This is materialised through protection across a broader scope of goods and services as well as protection against marks that are similar, as opposed to the confusingly similar criteria for other marks.

How to enforce rights in a trademark in Norway?

The Trademark Act regulates how trademarks are enforced under Norwegian law. Depending on the claim, there are several different options available.

Court proceedings in Norway

Firstly, claims of infringement, invalidation or cancellation of a trademark may be filed directly before the ordinary courts. The Oslo District Court will be the compulsory court of first instance, as it has exclusive jurisdiction over IP matters.

For a more in-depth view of the rules and proceedings in trademark litigation matters, please see our article “Trademark litigation in Norway”.

Administrative review in Norway

As opposed to infringement claims, claims of invalidation or cancellation may be filed directly with the NIPO, following a 2010 amendment to the Trademark Act. The regulations were changed to provide a simpler, less costly and more efficient alternative to enforce trademark rights compared to court proceedings.

The administrative proceedings are usually written only, and there is no discovery involved. During the administrative review, the NIPO will consider the claim in accordance with the Trademark Act and issue its decision much quicker than would be the case through the court system.

The decision from the NIPO may be appealed before the IP Appeal Board, which in turn may be appealed before the regular court system.

Can trademark rights be effectively enforced in Norway?

Generally, the courts are quite thorough in their review of trademark appeal cases and infringement matters. Although much care is taken in the review of technical views expressed by the NIPO and the IP Appeal Board in patent cases, no such legal doctrine exists in trademark-related case law, as indicated in the Supreme Court case Rt. 1995 s. 1908 Mozell.

As a result, the Supreme Court has gone far in strengthening the trademark holders’ protection against trademark infringement. Although not surprising, the Supreme Court in case HR-2020-1142-A ruled that the sale and use of replacement screens bearing the Apple logo, albeit not visible to the end-user, represented infringing use.

The decision is one of many that indicates a strengthening of the protection offered to a trademark holder.

Trademarks as property under Norwegian legislation

Under Norwegian law, no recording of agreements is required for legal effect. Accordingly, licensing agreements are regulated by general Norwegian contractual law.

As of today, trademark rights as such cannot be subject to security interests. However, as the massed intellectual property of a person or entity may represent considerable value, it may, under the circumstances, be included in the plant and machinery. Under the Mortgage Act, plant and machinery can be subject to security interest – thereby including possible trademark rights. New regulations are expected to come into force in 2021.