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Which courts are empowered to hear trademark disputes?
The Oslo District Court has exclusive competence in trademark infringement actions relating to registered trademarks and on the validity of registered trademarks, and has several judges with special IP training. The court’s decisions can be appealed to the Borgarting Court of Appeal, and subsequently to the Supreme Court.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
Civil court proceedings are available to rights holders (or licensees) whose mark has been infringed.
Criminal penalties are also available, but are rarely tried before the courts, and usually only in connection with other crimes (eg, counterfeit goods).
A civil proceeding will typically entail:
- the plaintiff’s submission of a writ of summons;
- the defendant’s notice of intention to defend;
- the exchange of several written pleadings and possible witness and party statements; and
- oral hearings.
As an alternative to court proceedings, an infringement matter can be brought before the independent Committee for the Control of Unfair Competition. The committee is made up of representatives from trade and industry, as well as experienced legal IP experts and lawyers. The procedures are written (two rounds of submissions from each party), and the committee usually issues its observation within three to four months.
The committee’s observations are not legally binding or enforceable, and damages or costs are not awarded. However, most (serious) commercial parties will respect and act in accordance with the observations. An observation from the committee does not prevent either party from bringing the matter before the regular courts.
Who can file a trademark infringement action?
The rights holder, and in certain cases the licensee, can file a trademark infringement action.
What is the statute of limitations for filing infringement actions?
A party should take action without undue delay and within a reasonable time once it becomes aware of infringing activity. If a party stays passive or takes an unreasonable length of time to assert a right, the party may, under the circumstances, lose its right and position.
The Trademarks Act contains regulations regarding a trademark owner’s loss of right to take action against a newer mark in cases of long-term (more than five years) and good-faith application or use of the newer mark, and only where the rights holder has been aware of the newer mark.
What is the usual timeframe for infringement actions?
The Oslo District Court will usually hear a case within six months of the filing of the writ of summons. Following the oral hearing, the court’s decision is usually issued within two to four weeks.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
The first and most important criterion for the grant of a preliminary injunction is established in the Dispute Act: an interim measure can be granted only if the claim made by the petitioner and the basis for security are proven on a balance of probabilities. This means that the court must find that it is more probable than not that the rights holder will succeed in the main proceedings.
Second, according to the Dispute Act, the court may grant a preliminary or interim injunction only when one of the following criteria is met:
- The defendant’s conduct makes it necessary to secure the claim provisionally because the action or execution of the claim would otherwise be considerably impeded.
- The court finds it necessary to make a temporary arrangement in a disputed legal issue in order to avert considerable loss or inconvenience.
An injunction is granted at the court’s discretion. In addition to the requirements mentioned above, the court will also consider the balance of interest – that is, whether the loss caused by or inconvenience of an injunction to the defendant is not obviously disproportionate to the rights holder’s interest in the injunction.
A preliminary injunction will usually be granted following oral hearings and the exchange of written pleadings. However, an ex parte injunction may be granted if there is a risk related to delay or notification (only in exceptional circumstances). If the court decides to grant a preliminary injunction without oral hearings, the parties can request subsequent oral hearings.
It will normally take between two weeks and two months before the hearing is held, and a decision is issued thereafter.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
Both financial compensation and punitive damages are available under Norwegian law.
In regard to compensation, a general principle of entitlement to compensation for the actual financial loss or damage caused by a tort, delict or quasi-delict applies.
For trademark infringements committed with intent or through negligence, the Trademarks Act establishes three alternative ways of measuring damages:
- compensation corresponding to a reasonable licence fee for the exploitation, as well as damages for any loss resulting from the infringement that would not have arisen in connection with licensing;
- damages for any loss resulting from the infringement; or
- compensation corresponding to the gain obtained as a result of the infringement.
Compensation and damages are awarded based on whichever provision is most favourable to the rights holder.
If the infringement was committed intentionally or through gross negligence, the infringer must, if the rights holder so demands, pay compensation corresponding to double the reasonable licence fee for exploitation, rather than damages.
For infringements that took place in good faith the infringer must, insofar as this is not seen as unreasonable, pay compensation corresponding to a reasonable licence fee for the exploitation or corresponding to the gain resulting from the infringement.
Even if a general principle of entitlement to compensation applies, it is a common aspect to all IP-related matters that it is difficult for the plaintiff to substantiate the order of its loss. This, combined with a somewhat cautious approach taken by many judges, is said to be the reason why the level of compensation awards has traditionally been quite low. However, there are signs that this may be changing.
With respect to punitive damages, any person who intentionally commits or aids and abets the commission of a trademark infringement is liable to a fine or imprisonment for up to one year.
If particularly aggravating circumstances exist, the penalty may be a fine or imprisonment for a term of up to three years. When assessing whether particularly aggravating circumstances exist, specific importance will be attached to the loss inflicted on the rights holder, including:
- any damage to the rights holder's commercial reputation;
- the gain procured by the infringer; and
- the extent of the infringement in other respects.
What customs enforcement measures are available to halt the import or export of infringing goods?
In accordance with Section 15 of the Customs Act, Customs is authorised to detain goods which it suspects of infringing IP rights, including trademarks, designs, patent and copyright, as well as goods it suspects may infringe the Marketing Control Act and provisions concerning good and honest business practice.
Customs will forward a formal notification to the respective rights holders, including the name and address of the importer and exporter, the number of detained goods, and in some cases pictures of the detained goods. The rights holder has 10 days to obtain written consent for the destruction of goods from the importer. If the importer does not respond to the request, or objects to the destruction, the consignment will be released to the importer.
To avoid infringing goods being released, the rights holder must obtain an interim injunction through the courts within the 10-day period, requesting that the goods be detained until the matter has been solved either between the parties or as a result of civil court action.
Alternatively, a rights holder may file for an annual interim injunction, requesting that suspected counterfeit goods be detained by Customs. For a longer period than the 10 days provided under Section 15 of the Customs Act. Another benefit of an annual interim injunction is that Customs is obliged (not merely authorised) to halt the import of infringing goods.
What defences are available to infringers?
Infringers can avail of the following defences:
- import for private use;
- the parallel import of goods (in Norway, the European Economic Area exhaustion of rights applies); and
- spare parts.
What is the appeal procedure for infringement decisions?
An infringement action must be brought before the City Court. City Court decisions may be appealed to the Appeal Court, and subsequently to the Supreme Court.
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