The legal framework for the protection and enforcement of IP rights in Norway consists of several laws, including:
- the Trademarks Act;
- the Patents Act;
- the Designs Act;
- the Act on Company Names;
- the Copyright Act;
- the Act on Plant Breeders’ Rights;
- the Act on the Protection of Layout Designs for Integrated Circuits; and
- the Customs Act.
These acts also set out provisions relating to the infringement of protected rights.
In addition, the following acts contain certain provisions on the infringement of IP rights:
- the Marketing Control Act; and
- the Civil Penal Code.
The Marketing Control Act provides as follows:
It shall be prohibited in the course of trade to use copies of distinguishing marks, products, catalogues, advertising materials or other produced items in such a manner and under such circumstances that the use must be considered an unfair exploitation of the efforts or results of others, and to present a risk of confusion.
It shall be prohibited in the course of trade to use an incorrect or otherwise misleading representation which is likely to influence the demand for, or supply of, goods, services or other products. In this chapter, ‘representation’ shall mean any form of announcement or statement made orally, in writing or otherwise, thus including descriptions, pictures, demonstrations, the form, size or type of packaging, etc.
No act shall be performed in the course of trade which conflicts with good business practice among traders.
These provisions are often invoked by rights holders in combination with the applicable laws (eg, the Trademarks Act). However, they also apply to intellectual property which is not necessarily protected through trademark, design or patent registrations, and thus they represent an independent legal basis for pursuing counterfeit products.
Norway is a signatory to several international IP rights protection agreements, including:
- the Paris Convention;
- the Agreement on Trade-Related Aspects of IP Rights;
- the Madrid Protocol;
- the Hague Agreement;
- the European Patent Convention; and
- the Bern Convention.
Norwegian IP rights legislation is largely harmonised with the corresponding legislation in other European countries. However, Norway is not an EU member state and thus is not part of the Community trademark and Community design systems.
Further, with regard to customs surveillance and border control, Norwegian legislation (through the Customs Act) differs somewhat from that of the European Union. However, the legal framework and procedures are being reviewed, with the aims of simplification and harmonisation with EU customs procedures. In particular, where small consignments are involved, the customs authorities are working to establish an arrangement that assumes consent to destroy suspect counterfeit goods if no response is received to a request for consent in this regard.
Customs plays a key role in preventing the international movement of counterfeit goods. More specifically, Customs is authorised to detain ex officio suspect counterfeit goods and goods suspected of infringing IP rights.
On September 1 2007 Norway implemented new provisions regarding the detention of goods that violate IP rights. Further, on July 1 2013 important changes were implemented, which granted Customs broader powers.
Section 15 of the Customs Act reads:
(1) The customs authorities may, notwithstanding confidentiality, notify the rights holder if there exists a reasoned suspicion that the import or export of goods subject to customs treatment will constitute an infringement of an intellectual property right as mentioned in The Dispute Act Section 28 a-1 third subsection, first sentence. In addition to the grounds for suspicion, the notification shall, to the degree such information is known, include information about the sender and receiver’s name and address, the origin and character of the goods, and the number of detained goods. The authorities can detain the goods in up to ten working days counting from the date on which the notification was issued.
(2) The consignee, or his representative, shall be notified when the customs authorities notify the rights holder or detain goods pursuant to subsection (1).
An important change implemented in 2013 was new Section 15-1 (3), which reads: “This chapter shall be applied accordingly in connection with import or export of goods which violates the Marketing Control Act Section 30, and in connection with import or export of goods violating the Marketing Control Act Sections 25 and 26, if the infringement consists of imitation of a third party’s products, trademarks, marketing means or other produced items.”
This provision authorises Customs to detain goods that appear to be counterfeit or to violate the Marketing Control Act for 10 working days.
Customs will notify the rights holder and the importer of the detention. The rights holder must investigate the goods, based on information and photographs received from Customs, and then settle the matter amicably with the importer if the goods are deemed counterfeit or infringing. Such amicable settlement usually includes obtaining the importer’s written consent to destruction of the goods, but may also include provisions on damages, liquidated damages and the importer’s obligation to provide information about its network. If an amicable settlement is not reached, the rights holder must obtain an interim injunction from the Oslo City Court, ordering Customs to detain the goods beyond the 10-day period. If Customs receives no interim injunction or written consent for destruction or other amicable settlement within the 10-day period, the goods will be released to the importer.
Customs is not obliged to act pursuant to the above provision. However, rights holders have two options through which to prevent the import and export of infringing goods.
Customs notice application
First, rights holders can file a customs notice application requesting Customs to detain goods that are suspected of infringing IP rights. Customs has provided a standard form for this purpose, which enables it to identify such goods easily. Customs notices remain in force for 12 months and can be extended for successive 12-month periods.
Alternatively, rights holders may file for a preliminary injunction, valid for 12 months, through which Customs is instructed to detain goods that bear an identified trademark or design and have been imported by a party that is not an official distributor.
The benefit of an interim injunction is that the rights holder is granted a six-week period from notification of detention to settle the matter amicably with the importer or initiate court proceedings against the importer. This will allow the rights holder more time to act than with voluntary detentions.
Over the years, this has proved to be an effective system against the import of counterfeit and infringing goods. Unlike the voluntary system, a preliminary injunction obliges Customs to detain suspect counterfeit or infringing goods. Hence, this system is considered a more reliable alternative for rights holders. In order to obtain a preliminary injunction, the rights holder must convince the court (through written proceedings) that there is a pertinent risk that counterfeit goods bearing the subject trademark or design, or goods infringing the rights holder’s rights in accordance with the Marketing Control Act, may be imported into Norway. Documentation of previous cases in the Norwegian or other markets may support such view and risk.
Interim injunctions are valid for 12 months and may be renewed on request, provided that the court finds that the conditions for the injunction are still fulfilled.
Intentional infringement of IP rights in the course of trade constitutes a criminal offence.
Violation of the Trademarks Act, the Patents Act, the Designs Act, the Copyright Act and the Marketing Control Act may result in fines and/or imprisonment of up to 12 months. Under certain aggravating circumstances, the penalty may be up to three years’ imprisonment.
Infringement of IP rights is subject to public prosecution only at the request of the complainant, unless the public interest requires action in the absence of a request by the complainant.
In practice, criminal prosecutions are rare and most offenders in IP rights cases are tried before the civil courts if the matter is not settled amicably.
Domestic legislation and the court system provide rights holders with several measures for enforcing their IP rights, the most common being:
- customs surveillance (customs notice applications, interim injunctions, amicable settlements, usually including voluntary destruction of the counterfeit goods);
- cease and desist letters;
- interim injunctions;
- full proceedings;
- judicial mediation; and
- rulings of the Committee for the Control of Unfair Competition.
Cease and desist letters
Private civil enforcement of IP rights is typically initiated by a cease and desist letter to the infringer, asserting the rights holder’s rights and requesting that the infringing activity cease immediately and that the infringer declare that it will refrain from infringing the subject rights again in the future. The rights holder may also seek the destruction of any remaining goods and claim damages and reimbursement of its legal costs. Further, in a cease and desist letter the rights holder may seek supplier details in order to trace the supply chain.
If the infringer does not respond to a cease and desist letter, or in the event that the rights holder needs to take urgent action to stop the infringing activities, the rights holder may apply to the court for an interim injunction. An interim injunction will be issued only where the rights holder would suffer irreparable damage if the injunction were not granted.
As a fundamental prerequisite, a request for an interim injunction requires that the matter be considered urgent. Therefore, the rights holder must request the injunction shortly (or without undue delay) after becoming aware of the infringing acts.
The court will usually rule in the rights holder’s favour if it finds that the rights holder has demonstrated probable cause for infringement, and that it is reasonable to assume that a continued act of infringement will diminish the value of the subject intellectual property.
An interim injunction will be valid only until a judgment has been rendered in full proceedings.
The rights holder may choose full proceedings with or without a prior interim injunction.
During a full trial, the rights holder will usually seek an order for a permanent injunction, destruction of infringing goods, payment of damages and reimbursement of its legal costs.
Recent changes in the legal framework have included provisions for the court to lay down prohibitions against future infringements.
Judicial mediation is an alternative approach for settling disputes before progressing to main court proceedings. Judicial mediation is often easier, quicker and cheaper for the parties than taking the case to court, and cases are heard in camera. If the parties reach an agreement during the judicial mediation, the case can be concluded in the form of an in-court settlement. Thus, the parties avoid trial and judgment before the court. Judicial mediation is applicable only to civil cases; criminal cases cannot be settled in this manner.
The purpose of judicial mediation is to reach a settlement that is acceptable to both parties. The judicial mediator – frequently a judge or a lawyer – assists the parties in reaching an agreement. The judicial mediator attempts to obtain a view of the parties’ interests and must try to establish a basis for dialogue that promotes understanding and agreement between the parties. For many rights holders, it is important that the hearing is conducted in camera, so as to be shielded the presence of the media or third parties when the matter is discussed.
Judicial mediation succeeds in 70% to 80% of cases. If the disputing parties are unable to reach an agreement, the case is referred to another judge for further handling. As the judicial mediator is bound by confidentiality, the judge taking over the case will not know the details of the mediation. Even if a case is not resolved through judicial mediation, the mediation is likely to facilitate the subsequent processing of the case.
Committee for the Control of Unfair Competition
As regards violations of the Marketing Control Act and its provisions on good business practice and prohibition against copying the marks and products of others, another effective, quick and cost-efficient alternative to interim injunctions and full proceedings is a voluntary dispute resolution process. The Committee for the Control of Unfair Competition rules in disputes between entities on whether a given form of marketing violates the Marketing Control Act. Usually, the losing party complies with the committee’s decision.
As is the case in so many other countries, the Internet plays a key role in IP rights infringement in Norway and counterfeiting is increasingly carried out online. Rights holders must adopt new multi-jurisdictional strategies to eliminate the source and the importers and distributors operating online.
One major challenge that rights holders face with the Internet is identifying offenders and where their place of business is situated. As soon as the offender is identified, the rights holder must determine the appropriate jurisdiction in which to initiate legal proceedings.
Several online auction sites and other e-commerce sites have policies for dealing with IP infringement (eg, programmes for removing infringing or unlicensed content or items). Rights holders may notify the website owner of infringing items and ask it to remove them.
Further, private investigators and the rights holder’s legal representatives may be hired to monitor online counterfeit activity.
As Norway is not an EU member state, Norwegian rights holders cannot use the recently implemented Office for Harmonisation in the Internal Market enforcement database.
It is advisable for rights holders to have an IP rights strategy covering trademarks, company names, copyrights, designs and patents. Since it is generally easier to enforce registered – rather than unregistered – IP rights, an IP rights strategy should include a plan for protecting relevant IP rights through national and international registrations.
An IP rights strategy should also include principles on how to deal with infringement matters. The following actions and activities should be considered:
- taking measures to make copying of the products more difficult and to make exposing infringements easier (eg, by using optical mark reading technology);
- establishing contact with local counsel and investigators;
- cooperating with customs authorities. Customs notice applications are a cost-effective way of dealing with counterfeit goods. To ease Customs’ work, the rights holder should keep Customs updated with a list of trademarks and provide it with a manual containing information about the original products and a list of official licensees and entities within its network;
- actively using interim injunctions, which are valid for 12 months;
- developing market surveillance programmes to monitor retail and wholesale stores, exhibitions, the media, the Internet and trademark, design and patent publications, among others;
- controlling contractual relationships with third parties. Licence agreements should regulate whether the licensee shall monitor the market for counterfeit goods and whether it shall alert the rights holder of any findings;
- cooperating with e-commerce websites; and
- cooperating with national and international anti-counterfeiting agencies.
Trine Greaker Herzog & Cecilie Berglund
This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.