Designs and Models
– The Law of May 29, 1970, effective from October 1, 1970 is repealed (the Norwegian Designs Act is in all essentials identical with the Designs Acts of Denmark, Finland and Sweden). Published: “Norsk Tidende for det Industrielle Rettsvern”, Part III: “Designs” (Official Gazette concerning Norwegian Laws).
– The new EU-directive based Designs Act was implemented on May 1, 2003, last amended June 21, 2019.
– Design Regulations, last amended April 1, 2013.
Membership in International Conventions
– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Locarno Agreement Establishing an International Classification for Industrial Designs, since April 27, 1971.
– Convention Establishing the World Intellectual Property Organization (WIPO), since June 8, 1974.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since July 29, 1983.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Hague Agreement Concerning the International Registration of Industrial Designs, Geneva Act, since June 17, 2010.
Applicant: author (creator) or his assignee. Applicants must provide an address for correspondence. An assignee shall declare his right to apply for the design registration. Naming of inventor(s): compulsory. The inventors or designers can be individuals or a group of persons, e.g. forming a graphics design firm. Naming of such firm and its address will be acceptable, assuming that all employees thereof have contributed to the design(s). Foreigners: as for nationals. Definitions of designs and models: a design is defined as the appearance of a product or a part of a product which particularly is a result of the characteristic features of lines, contours, colors, shape, structure or the material of the product or the ornamentation of the product. A product is defined as an industrial or artisan produced article, including also parts to be included in a composite product, packaging, equipment, graphical symbols and typographical lettering, but excluding software programs. Further, parts of a product would be allowable, provided they are visible during normal use and have novelty and individual character. Also, the appearance of a web page as visible on a PC display would be allowable for design registration, or even part of a restaurant interior. Not registrable: a design may not be registered: (1) if the design or its exploitation would be contrary to decency or public order; (2) if the design contains without authorization: public coats of arms, flags or other public emblems or signs, including the official domestic or foreign control or guarantee marks of seals that are established for articles of the same or similar kind as the articles for which the design is demanded to be registered. Further, the design shall not be registered if it contains anything that may be confused with anything that is liable to be interpreted as a merchandise characteristic, a company or other business copyright, or a statement protected according to a regulation related to quality control of agricultural products. A design not normally seen in use (e.g. internally of a domestic device) may not be protectable. Novelty: a design is considered not to be publicly available in accordance with the Designs Act Section 5 if the design has been made publicly available less than twelve months before the priority date or before the date of the application (if no priority is claimed), and such public availability has been made by the designer or the assignee. A design disclosed for example in an earlier patent application, which has become publicly available, may be registered within twelve months from the public availability, provided the design is not publicly known, otherwise, more than twelve months prior to the filing of the design application. Priorities: must be claimed when filing, and within six months from the first Convention application disclosing the design. Priority documents to be filed only upon request. An application having multiple designs may alternatively have single priority or partial priorities (some designs having no priority). Classification: the design applications and registrations shall be classified in conformity with the Locarno International Classification, 10th Edition. Series applications: an application may comprise more than one design if the articles for which the designs are demanded to be registered all belong to a single main international class (different subclasses within a single main class are permitted). If the designs belong to several or different main Locarno classes, separate applications will have to be filed so that there is only one common main class in each series application. An application for such a series or joint registration may comprise an unlimited number of designs.
Filing requirements for an application (recommended to be sent to resident agent):
1. Name and address of applicant;
2. Name and residential address of designer(s);
3. Title of design(s) (a brief, informal description of the design for classification purposes may be helpful);
4. Convention priority data, if any (six months);
5. Power of attorney is required;
6. 1 or more views (drawings, photos) showing all aspects of the design. 1 set to be filed. Maximum size of picture: 21 x 29.7 cm (A4 size). Minimum size is 3 x 3 cm. All views should have a white frame of at least 5 mm. The views must be suitable for black and white reproduction in another scale, have good contrast and should not contain any text or any elements not related to the design. Color photographs are acceptable, but colors may limit the scope of the protection. There is no limitation to the number of views of each design. No extra fees apply for multiple views;
7. Assignment (and new power of attorney) will only be required if ownership is changed from the first applicant to subsequent applicant(s);
8. Indication of whether the applicant wants the registration to be made in colors, whether novelty examination is to be requested (not recommended), and whether publication is to be deferred by max. six months from priority date or by six months from filing date if no priority is claimed.
Minimum requirements for filing design application: applicant’s name and address, title of the design, priority date (if any), 1 copy of the drawings or photos. An additional copy for the agent’s file is highly recommended. Late filing: documents listed under 5 and 7 may be filed at a later date.
Filing of certificate of priority: may be filed at a later date (see above). Claiming of more than one priority in an application for joint (serial) registration: possible, limited to one priority claim per one particular joint design within the registration, provided all of the designs belong to the same Locarno class.
Protection in Norway through International Design Registration (WO): such protection has been implemented as of July 1, 2010. If the Patent Office receives an application in electronic form for such protection, clearly presenting and defining the design(s) and indicating the designated countries, the Patent Office will forward the application to WIPO for further processing and distribution to the designated countries. Estimated processing time is maximum six months.
Amendment of application: an application may not be amended to concern another design or another article than stated in the application. Examination: is only performed upon special request and payment of a fee; otherwise, the design registration is granted if all formalities are in order. However, if examination is requested, the Patent Office shall consider everything brought to its knowledge, as by search ex officio, opposition, observation or otherwise. Application kept secret: (a) unless postponement has been requested, the documents of an application are accessible to the public immediately after filing in this country. Such postponement may be requested only up to six months from the filing date (if no priority is claimed) or priority date; (b) when the application is accepted its documents shall be laid open for public inspection and the accepted design shall be advertised; (c) the Patent Office issues its own publication on various advertisements and topics. If a design application has no claim for Convention priority or Norway represents the first country in which the design is filed, postponement of publication is strongly recommended. Dispute over ownership: if a third party claims proper ownership to a design and the Patent Office decides to transfer the rights to such third party, the third party (new owner) is required to pay a new application fee. Opposition: anyone may file opposition under the provisions of administrative reexamination at the Norwegian Patent Office at any time until the date of expiry of the design registration. An opposition may be considered even when withdrawn. Appeals: applicant or opponent may appeal a decision by the Patent Office to the Board of Appeal within two months. Applicant may appeal to the Oslo District Court within two months after the decision of the Board of Appeal. Observe that the Board of Appeal (KFIR) is no longer part of the Patent Office, but an independent legal entity. It is essential that with an appeal, all required documents should be provided, as KFIR does not necessarily request a complete file copy from the Patent Office. For further details, see: www.kfir.no/english-summary.aspx. Prior user: anyone who used the design in good faith, or had made substantial preparations to that effect, prior to the filing date or, in case of priority, the priority date of the application, may continue to use it in his enterprise while retaining the general character of said use. Division: independent design(s) disclosed in a design application as filed may be divided out as from the filing date of said application. Dispute about ownership: if anybody claims before the Patent Office that he and not the applicant is entitled to the design registration, the Patent Office may decide on the matter through Administrative Reexamination. A decision can be appealed to the Board of Appeal and subsequently to the Oslo District Court. Publication: see above under “Application kept secret”. Applications filed before May 1, 2003: examination is made in accordance with the old Designs Act as regards to novelty and registrability; variants not allowed in same application and other formalities. Restitution of loss of rights: if a set term for action was non-intentionally not met, a request for restitution must be filed within two months from the date on which the error was made, but not more than four months from the actual due date. Does not apply to priority rights.
Delivery of document: the official certificate of registration is delivered shortly after the design has been registered, usually one to two months afterwards. Beginning of protection: filing date. Duration – extension: twenty-five years (five periods of five years each), extension of duration not possible. At the time of filing it is possible to request and pay for five, ten, fifteen, twenty or twenty-five years of duration. A design application is, however, filed for a minimum period of five years. Note: spare parts are protectable for a duration of five years only. Annuities: every five years, see, however, “Duration – extension” above. Marking of registered design: not compulsory but advisable. Text of marking: “Norsk Design Reg. Nr…….” Assignments and licenses: an assignment or a license will be registered upon request. Document to be filed is assignment or license agreement.
Modification of Protection after Registration
Administrative limitation: possible during the lifetime of the design registration – a request may be filed by anyone. Appeal can be filed at the Board of Appeal (KFIR). Right of prior user: prior user may continue his use. Opposition to registered designs: possible at any time during the life of the registration. Such oppositions must be lodged with the Norwegian Patent Office through the provision of Administrative reexamination. Appeal can be filed at the Board of Appeal (KFIR). There are limitations as to what types of decisions may be appealed to the Oslo District Court. Infringement: a design registration confers on its owner an exclusive right which is infringed in case the design is used commercially, or through the manufacture, importation, use or the offering for sale, lease or lending of goods, the appearance of which does not substantially differ from the design, or goods embodying the design. This right is limited to goods of the same or similar kind as the articles for which the design has been registered. In case of infringement, the infringer may, depending on circumstances, be fined or be subject to imprisonment of maximum one year. However, if the infringement is considered by the court to be of very serious nature, an imprisonment of maximum three years may applied. Distrain: if there is made a distrain on the design rights, the Designs Register must be notified. Partial assignment of design rights: if only some of the design in a joint registration are to be assigned to a third party, then in order to have such assignment properly recorded in the Designs Register, a division of the registration must be made to yield two separate registrations. An Official fee will apply.
Any legal distrain on design rights should, according to the amendments of the Designs Act on July 1, 2015, be recorded in the Designs Register of the Patent Office.