Introduction

The protection of industrial designs is an often overlooked opportunity. Apart from design products, such as furniture, interior lamps and tableware, there is a tendency to focus on patents and trademarks as the dominant types of IP right. However, there are many good reasons for supplementing a portfolio of rights with design registrations or for focusing primarily on design rights as the most important type of IP protection. Design rights are easy to obtain, the registration process is quick and applicants end up with documentation of what has been protected. The importance of design registrations will only increase in future, not only for consumer goods, but also for business-to-business products when high-quality design will be a way of communicating the quality of a product and set it aside as unique and preferred among users (eg, professional tools, computer products for business or the packaging of intermediate goods, where recognisable design elements can be easily associated with quality and reliability).

Design protection

When seeking design protection in Norway, an applicant can file directly with the Norwegian Industrial Property Office (NIPO) under the Paris Convention for the Protection of Industrial Property or the Hague Agreement.

According to Norwegian legislation, the design must be novel when the application is filed and have individual character. However, a grace period of 12 months applies from the day of publication, provided that the publication was made by or based on information from the designer, or was the result of abuse of the designer's rights.

A design filed directly with NIPO is registered after a formal examination. NIPO does not undertake a substantive examination and will therefore not reject an application on substantive grounds. However, substantive examination is conducted on request.

Unless the applicant requests a deferment of publication, the application documents will be publicly available the day after filing. Postponement of registration can be requested for up to six months from the filing date or the priority date, if priority is requested.

If the application fulfils the requirements of a formal examination, the registration is published in theNorwegian Official Designs Gazette.

Formal requirements

In order to fulfil the formal examination requirements, the application must contain:

  • the full name and address of the applicant and the representative, if any;
  • the full name and address of the designers; and
  • graphical representations of the design shown as photographs or drawings.

The date and application number for the first filed application must be submitted if priority is requested. Priority documents need be filed only if officially requested. Partial priorities are allowed.

The following can be protected with a design registration in Norway:

  • The appearance of a product or part of a product resulting from the characterising features of the lines, contours, colours, shape, structure or material of the product or ornamentation;
  • An industrial or handmade object, including parts which are intended to be incorporated in a complex product, packaging, equipment, graphic symbols and typographic typefaces, but not computer programmes; and
  • A complex product consisting of several components which can be replaced, so that the product can be taken apart and reassembled.

The design registration is defined by the illustrations only. If the drawings show objects not considered to be part of the protected design, these objects must be shown with stippled lines. The classification or title is not limiting for a design registration and NIPO may suggest amendments at its discretion. The application cannot include a description; however, additional drawings for information purposes only are allowed, such as drawings showing the use of the design or the design with colours. If deemed necessary, NIPO may require the applicant to provide a model of the design.

The joint registration of designs is possible in a single application, provided that the designs belong to a common Locarno design class. There are no limits to the number of designs in a joint registration in Norway.

After Norway joined the Hague system in June 2010 there were some amendments to Norwegian legislation in order to harmonise with the Hague Agreement, such as allowing an exploded view of a design. Applications filed via the Hague system will undergo no additional examination by NIPO after the International Bureau's formal examination. Applications that fulfil the formal requirements will be registered and published in the Norwegian Official Designs Gazette and the International Designs Bulletin.

Design registrations are valid for a period of five years and may be renewed for four additional five-year periods, up to a maximum of 25 years. The documentation of use of a registered design is not required. Marking is not required, but is recommended. Licences can be registered at NIPO.

Anyone who believes that a design has been registered incorrectly can ask NIPO to undertake an administrative design review of the design registration. Requests for an administrative design review can be submitted as long as the relevant design registration is valid. A decision made in an administrative design review can be appealed to the Norwegian Board of Appeal for Industrial Property Rights within two months. Rulings made by the board may be brought before the law courts by the party that has had a ruling made against it.

For further information on this topic please contact Line Marjatta Nicolayssen or Tom Ekeberg at Zacco by telephone (+47 22 91 04 00) or email (line.nicolayssen@zacco.com or tom.ekeberg@zacco.com). The Zacco website can be accessed at www.zacco.com.

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.