The following national legislation is relevant for design protection:
- the Designs Act 2003;
- the Designs Regulations 2003;
- the Marketing Control Act 2009;
- the Copyright Act 1961;
- the Trademark Act 2010; and
- the Patent Act 1967.
Norway is a signatory to the following international treaties related to designs:
- the Locarno Agreement;
- the Hague Agreement and the Geneva Act;
- the Paris Convention; and
- the Agreement on Trade-Related Aspects of Intellectual Property Rights.
Community designs offer no protection in the Norwegian territory since Norway is not part of the European Union. Hence, in order to obtain a design registration, a design owner must file a national registration with the Norwegian Industrial Property Office (NIPO) or an international design registration designating Norway via the Hague System. However, the Design Act is based on the same principles as, and is harmonised with, the EU Community Designs Regulation (6/2002). Therefore, the Norwegian system is similar to the Community design system, including the option to include multiple applications in a single design application.
One of the main differences between EU design law and Norwegian design law is that unregistered designs are not protected under the Design Act. For unregistered designs, the owner must rely on copyright protection, claims under the Marketing Control Act or the Trademark Act (see “Related rights” below).
The designer or assignee of a design (whether a natural or legal person) may apply to register a design. NIPO does not require an applicant to submit assignment documentation from the designer, but does require the name and address of the designer to be included in the application. The application form must be signed by the applicant or its representative.
A ‘design’ is understood as the appearance of a product or part of a product characterised by its contours, colours, shape, structure, material or ornaments. Spare parts may be protected under Norwegian design law only if they are visible during normal use. In addition, the protection period for spare parts is limited to five years. Technical or functional features will be excluded from design protection, as well as any feature in the design determined by form and dimension to make it compatible as a component of other products (the ‘must fit’ exemption).
A design cannot include state emblems, official or international designations or designs that are contrary to public order or morality. Further, the design cannot include third parties’ trademarks, company names, copyright-protected works, photographs or other elements protected by law.
The two requirements for registration are novelty and individual character. This means that no identical design must have been made available to the public before filing. The Design Act allows a 12-month grace period from disclosure of the design, meaning that if the application is filed within one year of first disclosure, the novelty criteria will still be met. The design is considered to have individual character if it creates an overall impression that is different from a previous design. The designer’s freedom regarding the product type and the level of attention of the informed user will be relevant in assessing the individual character requirement. As there is limited design case law in Norway, EU case law principles on the assessment of individual character will be relevant.
Multiple design applications are available where the designs belong to the same main class under the Locarno Classification. The costs involved with filing one or more designs will depend on the local agent’s fees, but the NIPO official fees for design applications are:
- for a single application, Nkr1,900; and
- for multiple registrations, an additional fee for each design exceeding the first of Nkr1,300.
No opposition can be filed against registration of a design, but a third party may file an administrative review of the registration seeking nullification or cancellation
The registration period is a maximum of 25 years and the applicant may decide to register the design for five-year periods. The official renewal fees are as follows:
- second five-year period – Nkr2,900;
- third five-year period – Nkr3,500;
- fourth five-year period – Nkr4,100;
- fifth five-year period – Nkr5,000; and
- additional fee for each design exceeding one (for multiple registrations) – Nkr1,300.
Additional official fees are available on NIPO’s website (www.nipo.no).
NIPO prefers design applications to be filed electronically, but the application may also be filed by post or in person. The applicant need not appoint a representative, but the application must be in Norwegian and any documents submitted with the application must be in one of the Scandinavian languages. The application must include:
- the name and address of the applicant;
- the name and address of the designer;
- any priority claim (six months – may refer to only some of the designs in a multiple registration);
- the definition of the product and its Locarno classification;
- accurate illustrations of the design in the form of photographs, drawings or models;
- any request for deferred publication (up to a maximum of six months – unless otherwise indicated, the design will be published as soon as it is approved for registration);
- whether the design is in black and white or colour;
- if the design is a movable design, a description of the design; and
- the requested registration period (if five years is indicated, the design can still be renewed, up to a total of 25 years).
NIPO will examine a design only if it meets the formal requirements; it does not examine based on novelty and individual character. Once the formal examination has been finalised, the design will be registered and published in the Design Gazette.
No opposition can be filed against registration of a design, but a third party may file an administrative review of the registration seeking nullification or cancellation. The option for a third party to file an administrative review is available throughout the design registration period, except where the claimant alleges that it is the rightful owner of the design. In such cases an opponent has one year from the date on which it became aware of the registration to file an administrative review.
Administrative reviews may be filed based on claims that the design does not meet the requirements of novelty and/or individual character or, in the case of spare parts, that the design is not visible during normal use. The claimant can refer to a third party’s prior rights as the basis for a cancellation claim, except where the prior rights refer to undisclosed priority designs, prior trademarks, company names or copyright, as the latter may be referred to only by the rightful owner.
NIPO decisions may be appealed to the IP Appeal Board within two months of issuance. IP Appeal Board decisions may be appealed to the Oslo City Court, the Borgarting Court of Appeal and finally the Supreme Court.
As Norwegian design law protects unregistered designs, design rights will usually be enforced in combination with related rights, such as claims under the Marketing Control Act (see below).
Infringement may be claimed for an advertised, sold, imported or exported design that does not give the informed user a different overall impression from a registered design. Before commencing legal action against the infringer, the Civil Procedure Act requires that a cease and desist letter be sent, setting out the legal grounds and evidence in favour of infringement for the alleged infringer. If the infringer waives the infringement claim, the following legal measures are available to the claimant:
- Interim injunction – an interim injunction may be relevant if the infringer has already commenced sales and marketing of the infringing product, or if infringing goods have been detained at Customs, in order to ensure that further sales and marketing are prohibited or that the consignment is detained by Customs until the case is concluded. Depending on the particulars of the case, a bank guarantee may be requested as security. The interim injunction is filed with the relevant city court and oral hearings may be requested by the court or the parties. The timeframe for an interim injunction is approximately one month from filing to a decision. The city court’s decision may be appealed to the appeal board.
- Petition for information – as part of the infringement investigations, the claimant may submit a petition requesting information from the alleged infringer regarding the origin of the products, the distribution channels, the number of products distributed and the price, which may serve as useful information in settlement negotiations and as evidence in later court proceedings.
- Court proceedings – an interim injunction must be followed by court proceedings, but court proceedings may also be the first legal step after the initial cease and desist letter. The litigation venue is decided according to where the infringement took place; but if the infringement claim is met with a counterclaim referring to the validity of the claimant’s design, the two matters may be combined in a single action to be heard by the Oslo City Court. The court proceedings will include oral hearings and the timeframe from issuance of the writ to receipt of the court’s judgment is around six to eight months. The city court’s decision may be appealed to the Borgarting Court of Appeal and the Supreme Court.
Norway recently adopted legislative amendments to strengthen the enforcement of IP rights; the provisions on the calculation of damages represent the most fundamental change in this regard. Previously, the damages awarded for IP infringements were small and in many cases were insufficient to cover the rights holder’s actual loss.
For intentional or negligent infringement, a rights holder can claim compensation and damages based on the most favourable of three grounds:
- compensation equivalent to a reasonable licence fee or royalty for the infringement, together with compensation for any economic loss resulting from the infringement that would not have occurred had a licence been awarded;
- an award of damages equivalent to the economic loss suffered by the rights holder as a result of the infringement; or
- compensation at least equivalent to the profits made by the infringer.
Alternatively, if the infringer acted intentionally or with gross negligence, the rights holder may claim damages of twice the amount of a reasonable licensing fee or royalty.
Additionally, prohibitive judgments related to potential future infringement are available, as is the option to order preventive measures. For designs, the claimant may request that in order to prevent future infringements, the infringing product be withdrawn and removed from the market, destroyed or released to the importer. The infringer is economically responsible for the execution of preventive measures.
IP infringement has long been punishable in Norway. However, with the exception of the infringement of trademarks and integrated circuit rights in certain aggravating circumstances, until recently the maximum prison sentence was only three months, resulting in few charges being brought against infringers. In an attempt to improve this, the maximum sentence for infringement has now been increased to imprisonment for up to one year, or up to three years in aggravated cases.
Ownership changes and rights transfers
Design rights may be assigned and recordal of such assignment will be recorded with NIPO if requested by the parties. If some of the designs covered by a multiple design registration are to be assigned, the assignment cannot be recorded until the assigned designs have been split off into a new application.
Licences may be recorded if requested by the parties, but recordal is not compulsory. The Design Act states that a licensee cannot assign a licence without consent from the rights holder. However, if the licence is registered with a business, it may be assigned alongside the assignment of the business.
Although it is not compulsory to record assignments and licences, the Design Act states that only the recorded rights holder may legally enforce the registered design. In addition, if the design is assigned to more than one third party, the newest rights holder will prevail in an ownership conflict, provided that it is the first to record the assignment and acted in good faith at the time of recordal. The same principles apply to licences. These principles strongly encourage written assignment and licence agreements, as well as recordal thereof.
Relevant related rights are claims under the Marketing Control Act, the Trademark Act and the Copyright Act.
As unregistered designs are not protected under the Design Act, the most relevant legal basis to use as a supplementary or alternative basis for an infringement claim is the Marketing Control Act. In accordance with these regulations, a registered or unregistered design will be protected against infringing use if:
- the infringed design is original;
- the infringer has copied or intended to copy the design;
- the imitated product constitutes an abuse of the rights holder’s efforts;
- there is a likelihood of confusion between the products in question; or
- the acts of the alleged infringer conflict with good practice among traders.
The bar for proving infringement under the Marketing Control Act is somewhat higher than that under the Design Act, since it requires a subjective analysis of the alleged infringer’s actions and intentions, as opposed to a mere comparison of the overall impression created by two designs. However, after decades with a low rate of design filings by entrepreneurs, most Norwegian cases concerning copying of designs have been brought under the Marketing Control Act.
In addition, the Trademark Act offers protection to designs that are capable of distinguishing the goods or services of one commercial entity from those of others. NIPO is generally quite strict with regard to the distinctiveness assessment of three-dimensional marks, and a trademark application consisting of mere ornaments or the essential nature of the product will most likely be refused registration on the grounds that it appears to be a design and hence does not qualify as a commercial indicator. Distinctiveness may be acquired based on use, meaning that a design may, over time and during its use in the Norwegian market, obtain exclusive rights in accordance with the Trademark Act.
Designs may also be protected under the Copyright Act, although traditionally the originality requirement has been applied more strictly in Norway than in EU member states. The criterion of originality may be considered somewhat modified following the Supreme Court’s Tripp-Trapp decision (Rt 2012-1062), in which the Supreme Court approved and referred to the artistic features and distinctiveness of a highchair.
Celine Varmann Jørgensen
This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.