Trade and Service Marks
– Trade Marks Act of March 26, 2010, in force since July 1, 2010, last amended June 21, 2019, with Regulations of both trademarks and collective marks, last amended June 21, 2019.
Note: the 2010 Act replaced the former Norwegian Trade Marks Act of March 3, 1961, and the former Collective Marks Act of March 3, 1961.
Membership in International Conventions
– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Nice Agreement Concerning the International Classification of Goods and Services, Geneva Act, since July 28, 1961.
– 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.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since March 29, 1996.
Applicant (who may be): nationals or foreigners; individuals, firms or companies engaged in industrial or commercial activity or services (shipping, transport, advertising, education, insurance, etc.). Applicants must provide an address for correspondence. Kinds of protection: any sign capable of distinguishing the goods or services of one enterprise from those of other enterprises and capable of being represented graphically, inter alia words and word combinations, including slogans, personal names, devices and pictures, letters and numerals and the shape, decoration or packaging of the goods. Protection: may be obtained by registration or by use. Mere use, however, will only establish rights if the trademark has become well-known in Norway as indicator of commercial origin. Registrability/distinctiveness: a mark must be distinctive and not merely indicate the nature, quality, quantity, purpose, price or place or time of origin of the goods. Availability: a trademark applied for must not conflict with a protected surname, protected company name or trademark already registered or established through use in Norway. Other hindrances: (1) a mark contrary to law or public order; (2) deceptive marks, e.g. related to type of goods or services, composition thereof or geographic origin; (3) marks which, without consent of the appropriate authority, contain official coats of arms, flags or public emblems, abbreviations belonging to interstate organizations, etc., or a representation which is confusingly similar to said emblems; (4) marks containing, without lawful acquisition, matter which is apt to be taken as another’s firm, or as the name or portrait of another person, provided it does not obviously refer to one already long deceased; (5) contains a matter which infringes another’s copyright in literary or artistic work, or the right of another’s photography or design; (6) marks confusingly similar to another’s name or trade name or prior trademark registration; (7) marks confusingly similar to a mark which had been taken into use by another before the applicant, and of which the applicant was aware when filing his application, provided that the filing also must be deemed to have been made in bad faith; (8) marks confusingly similar to an international trademark registration effective in Norway; (9) marks for wine and spirits consisting of or containing geographical indications, unless the product has the geographical origin which the indication indicates; (10) marks which are related to common use of language or according to loyal and established business codes are common descriptions of goods or services. Collective marks: such marks are granted to associations or to public institutions, societies, etc. Note that geographic origin is protectable as collective mark. Priorities: may be claimed by applicants from country of the Paris Union and WTO when the application is filed within six months from the filing date of the priority application. Classification: International Classification of Goods and Services (12th Edition effective as of January 1, 2019).
Filing requirements for an application (recommended to be sent to resident agent):
1. Name and address of applicant;
2. Power of attorney (no legalization required; may be filed later);
3. For device marks (colors or black and white), 1 print of the mark (preferably digital print). For word marks, no prints are required;
4. List of goods and/or services (International Classification; additional fees apply for each class in excess of 3);
5. Number, date and nation of priority application if Convention priority is to be claimed;
6. Home certificate, usually not required.
Minimum requirements for filing: information on applicant, mark, list of goods and/or services. In the case of device marks, a print of the mark, preferably digital. For 3D trademarks there is no longer a size limit as regards the illustration (previously 8 x 8 cm). Enlargements are accepted in order that details can be properly examined.
For renewals: list of goods (if amended) which may be restricted but not enlarged.
Amendment of application: only minor amendments possible as far as the applied sign is concerned. List of goods may be narrowed, but not enlarged. Examination: covers formal requirements, registrability and possible conflict with previously registered trademark rights. Dispute over ownership: if a third party claims proper ownership to a trademark 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: when the application has been accepted by the authorities, it is registered and published in the Official Gazette (Norsk Varemerketidende) and opposition may be filed within three months from the publication date. Locally well-established trademarks only constitute grounds for opposition and not any grounds for invalidity. Disclaimers: available. Letters of consent: are as a main rule accepted. Appeal: both applicant and opponent may as a main rule (dependent upon the outcome of the Patent Office’s decision) appeal the Patent Office’s decision to 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. The term of filing the appeal is two months, calculated from the day when the Patent Office sent notification to the party(ies) of its decision. A decision from the Board of Appeal (KFIR) may, dependent upon the outcome of the decision at issue, be brought before the Legal Courts (Oslo District Court) within two months, calculated from the day when the Board of Appeal sent notification to the party(ies) of its decision. Correction of registration: as a main rule not possible, yet some minor amendments may under certain circumstances be allowed.
Delivery of document: if no difficulties arise during the examination, a mark will usually be accepted for registration between six to twelve months after filing, dependent upon the backlog and procedural time at the Patent Office. The official certificate of registration will be delivered shortly after. Beginning of protection: filing date or priority date. Kind of property: proprietor of a registered mark will obtain protection against another use of same or confusingly similar sign for same or similar goods and/or services. Same rights may be obtained in an unregistered mark as a result of the proprietor’s extensive use. Duration – extension: from July 1, 2010 ten years counting from the filing date. The mark is renewable for any number of ten-year periods (see below under “Renewal”). Obligation to use: unless there are proper reasons for not using a mark in Norway for the past five years, a registration may, upon request from a third party, be cancelled by either the Patent Office or the court. Marking of registered trademark: not compulsory, but could be favorable. Text of marking: “â” or “Registrert varemerke”. Renewal: the mark may be renewed every ten years, counting from the filing date. Application for renewal may be filed one year before the due date at the earliest, and such early renewal does not shorten the period of protection. Latest term for renewal – term of grace for renewal: six-month grace period after expiration of the registration. Renewal request within the grace period will call for an additional renewal fee. Modification of the mark: only minor modifications allowed. Changes in the list of goods: only restrictions of original specification allowed. Licenses: recordal in the Trademarks Register is optional. Assignments: are as main rule allowed. Recordal of the assignment in the Trademarks Register is optional, but usually advisable.
Modification of Protection after Registration
Opposition to registered marks: may be filed by any third party within three months after the publication of a trademark registration. Nullity actions, non-use cancellation actions, etc.: actions from third party(ies) to have a registered mark cancelled or annulled may be brought either before the Patent Office or before Oslo District Court on several grounds. A decision by the Patent Office can be appealed at the Board of Appeal (KFIR). In practice, the most important grounds in this respect would be claim for cancellation on basis of non-use (consecutive five-year period for which a mark has not been genuinely used), or nullity claims, typically with reference to prior rights blocking the candidate mark at the time of filing and registration. Compulsory licenses: there is no provision in the Trade Marks Act for compulsory license. Expropriation: as for “compulsory licenses”. Expiration: if renewal is not effected within the six-month period of grace, the trademark registration will definitely lapse. Validation of invalidated marks: only possible in connection with re-registration of such mark. Infringement and penalties: damages may be granted to the aggrieved party. If the infringer intended a substantial profit and the action is considered an obvious violation of the Trade Marks Act, the infringer may be punished with a fine or imprisonment of maximum one year. However, the infringer may in very exceptional cases be punished with a fine or even imprisonment for a maximum of three years. Administrative reexamination: the provision of administrative reexamination implies that the Patent Office has the authority to fully or partly set aside a registration which has been granted in violation with the conditions for registration and to cancel registrations for which the proprietor of the trademark has not fulfilled the obligation to use. This is considered to make it simpler and cheaper for business entities to enforce their interests. Appeal can be filed at the Board of Appeal (KFIR). Division of a trademark registration: the changes in the Trade Marks Act of July 1, 2010 makes it possible to divide a trademark registration. The changes have been implemented to satisfy requirements in the Singapore Treaty regarding trademarks.