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What is the primary legislation governing trademarks in your jurisdiction?
The primary legislation is the Trademarks Act 2010. While Norway is not a member state of the European Union, Norwegian trademark legislation is largely in harmony and in accordance with the EU Trademark Directive. Further, the Marketing Control Act and the Company Names Act supplement the Trademarks Act in certain areas of the trademark law.
Which international trademark agreements has your jurisdiction signed?
Norway has ratified numerous multilateral agreements on trademarks, such as the Agreement on Trade-Related Aspects of IP Rights.
Norway has also ratified the main multilateral treaties dealing with industrial property rights, such as:
- the Paris Convention for the Protection of Industrial Property;
- the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks;
- the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
- the Convention establishing the World Intellectual Property Organisation; and
- the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
Which government bodies regulate trademark law?
The Ministry of Justice and Public Security is the government agency responsible for the Trademarks Act and its implementing regulations.
Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Norway is a first-to-file trademark jurisdiction.
What legal protections are available to unregistered trademarks?
The Trademarks Act provides unregistered trademark protection through use if a significant portion of the relevant consumers perceive goods designated by the mark as originating from a particular undertaking (use-acquired rights).
An unregistered trademark may be used as the basis for opposition or cancellation proceedings provided that:
- it was used before the filing of a third-party application;
- the third party was aware of:
- the use of the similar mark at the time of filing; and
- whether the filing was considered to have breached good business practice (ie, was made in bad faith).
How are rights in unregistered marks established?
Rights in unregistered marks are established through extensive and exclusive use of a mark to the extent that the average consumer identifies the mark as someone’s trademark for specific goods or services. Use-acquired rights can be local or national. In the latter case, the mark may be registered in the trademark database.
Are any special rights and protections afforded to owners of well-known and famous marks?
Owners of well-known and famous trademarks are afforded an extended scope of protection. The extended protection implies a broader scope of protection in relation to both the similarity of the goods or services and the similarity of the marks.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Foreign trademark registrations are recognised to a certain extent in connection with bad-faith applications.
Further, foreign trademark applications or registrations made in Paris Convention member countries can be used as a basis for claiming priority in Norway.
What legal rights and protections are accorded to registered trademarks?
Registration of a trademark gives the owner the right to refuse third-party use of the same or similar marks in the course of trade.
Who may register trademarks?
Any private person, organisation or legal entity can register trademarks.
What marks are registrable (including any non-traditional marks)?
Any mark (eg, a word, device, slogan or number) that can be represented graphically and that meets the minimum requirements of distinctiveness can be registered. Non-traditional marks such as sound and smell marks are also registrable.
Further, the mark cannot infringe third-party rights, be deceptive (typically with respect to geographic origin) or be contrary to other public regulations or public morals.
Can a mark acquire distinctiveness through use?
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
A mark may be refused ex officio on both absolute and relative grounds.
Are collective and certification marks registrable? If so, under what conditions?
Collective marks are registrable. Certification marks are included under the collective mark regulations. In principle, the same registration requirements as for regular trademarks apply to such marks, and the application must be submitted with a set of provisions concerning the use of the mark.
Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
Yes, a power of attorney is required if the applicant uses an agent. An electronic copy of the executed document will suffice and there are no requirements for attestation or legalisation of the signature.
What information and documentation must be submitted in a trademark registration application?
The following must be included:
- the name and address of the applicant;
- a representation of the mark;
- specification of the goods and services;
- a power of attorney; and
- the priority claim (if applicable).
What rules govern the representation of the mark in the application?
At present, a trademark application requires that the trademark be represented graphically; thus, in practice it must be submitted in a readable form.
Are multi-class applications allowed?
Is electronic filing available?
What are the application fees?
There is currently an official application fee of NOK2,900 for up to three classes, with a further fee of NOK750 for each additional class.
How are priority rights claimed?
Priority is claimed by indicating this in the application form. The applicant must state:
- the priority application or registration number;
- the priority application date; and
- which goods in the Norwegian application are covered by the priority claim.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Availability searches are available but are not required or mandatory. The Norwegian IP Office (NIPO) search is a confidential pre-examination and includes an opinion on the mark’s registrability (absolute grounds) as well as prior rights in earlier applied or registered trademarks. The fees are NOK1,500 for up to three classes, with a further fee of NOK500 for each additional class.
What factors does the authority consider in its examination of the application?
The examiners normally examine the following factors:
- the classification of goods and services;
- whether the mark violates other laws, public order or morals;
- whether the mark is deceptive (typically with respect to geographic origin);
- whether the mark includes a coat of arms or a national flag;
- whether the mark is confusingly similar to prior trademark rights searchable in the Norwegian trademark database; and
- whether the mark will be perceived as, or includes, a copyright-protected work or title, protected surname, artist name or portrait.
Does the authority check for relative grounds for refusal (eg, through searches)?
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
Yes. The NIPO will allow the applicant several rounds of written submissions to rectify the application and overcome an objection. It is also possible to request a hearing or meeting with the examiner to discuss the details of a case. The official response deadlines can be extended by up to six months at a time. After the first six months the extensions are conditioned by “good cause” or documentation on ongoing settlement discussions.
Can rejected applications be appealed? If so, what procedures apply?
Yes. A rejected application can be appealed before the Norwegian Board of Appeal for Industrial Property Rights. The procedure is normally written and both sides are usually allowed to submit two pleadings. Oral hearings can be held in certain cases. There is no discovery involved in appeal cases before the board.
The official fees for an appeal is NOK4,400. The losing party can appeal the decision before the court.
When does a trademark registration formally come into effect?
Generally, a trademark registration takes effect from the application or priority date, which implies that an application will bar the registration of marks applied for after the application or priority date.
However, the registration procedure is considered final on expiry of the opposition deadline, which is three months after publication of the mark’s registration in the Trademark Gazette.
What is the term of protection and how can a registration be renewed?
Trademark registrations can be renewed every 10 years.
Trademarks filed after July 1 2010 are renewable for 10 years following the application date, whereas trademarks filed before July 1 2010 are renewable for 10 years following the registration date.
Renewal is carried out by paying the renewal fees through the NIPO’s online payment system or though the payer’s bank service.
What registration fees apply?
No official fees apply.
What is the usual timeframe from filing to registration?
If an application proceeds to registration without objections the process usually takes three to five months from the filing date.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Yes. Third parties can oppose a registration within three months from the publication date.
The procedure is written and both sides can submit two pleadings with a one-month response period. There is no discovery involved in opposition matters.
An opposition can be based on:
- likelihood of confusion with the opposing party’s earlier registered or unregistered trademark rights, trade names, registered company names, protected surnames, artist names, portraits or copyright protected work or title;
- lack of the required distinctiveness;
- the mark being contrary to any of the other absolute grounds provisions discussed above; or
- bad-faith filing of the application.
What is the usual timeframe for opposition proceedings?
The entire process, from the filing of the opposition to the issuance of the NIPO’s decision, usually takes between eight and 12 months, provided that the parties do not extend the response deadlines.
Are opposition decisions subject to appeal? If so, what procedures apply?
Yes. An opposition decision can be appealed before the Norwegian Board of Appeal for Industrial Property Rights.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
Yes. Registered trademarks that have not been genuinely used within five years after final registration (which is three months after the publication date) can be challenged and fully or partially cancelled. Once a mark has been challenged through administrative or court proceedings, the onus is on the rights holder to document genuine use.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
A trademark registration can be revoked on any grounds provided by the Trademarks Act, including lack of or loss of distinctiveness, infringement of third-party rights, breach of public laws and incorrect registration.
Who may file a request for revocation and what is the statute of limitations for filing a request?
Any third party with a legal interest can file a request for revocation.
The Trademarks Act includes regulations regarding a rights holder’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 younger mark, provided that the rights holder has been aware of the younger mark. These regulations are harmonised with Article 9 of the Trademarks Directive.
What are the evidentiary and procedural requirements for revocation proceedings?
The procedure is written and both sides can submit two pleadings within a one-month period. No discovery is involved in revocation matters, and the parties must document their claims. In non-use cancellation matters, the onus is on the trademark holder to document genuine use of the mark.
Revocation actions can also be brought before the regular courts.
What is the appeal procedure for cancellations or revocations?
An administrative decision issued by the Norwegian IP Office (NIPO) can be appealed to the Norwegian Board of Appeal of Industrial Property Rights, where a new written procedure similar to that of the NIPO is carried out. The appeal incurs an official fee of NOK4,400.
What is the procedure for surrendering a trademark registration?
National trademark registrations may be surrendered, in part or in whole, by written request to the NIPO by the rights holder or its local representative, while Norwegian extensions of international marks would be surrendered by written request to the World Intellectual Property Organisation (WIPO) or by submission of WIPO Form MM7 (partial renunciation) or MM8 (total cancellation) by the rights holder or its recorded WIPO representative.
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. Representatives on the committee are 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 same 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 reasonable time of becoming aware of the infringing activity. Passivity may lead to a loss of rights 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 use (more than five years) and good-faith application or use of the newer mark, provided that the rights holder was 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 that 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.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
Assignments are mainly governed by the Trademarks Act and Norwegian contract law, and are entered onto the register by request of the assignor or the assignee. There is no requirement to submit any documentation proving an assignment in Norway, implying that a simple form may be submitted with the Norwegian IP Office (NIPO) in order to record an assignment.
An assignment need not be recorded in order to have legal effect, although recordal is recommended for notoriety purposes and to ensure that notifications reach the correct rights holder.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
Licensing is mainly governed by the Trademarks Act and Norwegian contract law, and is entered onto the register by request of the licensor or the licensee. There is no requirement to submit any documentation proving a licence in Norway, implying that a simple form may be submitted with the Norwegian IP Office in order to record a licence.
A licence need not be recorded in order to have legal effect, although recordal is recommended for notoriety purposes. In revocation cases, a recorded licensee must be notified by registered mail before a third party can bring an action before the NIPO. Further, a licensee has the right to bring certain administrative and legal actions.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
Norway practises contractual freedom, and it is up to the parties to agree on the provisions to be included in a licence agreement (eg, quality control, license type, marketing strategy, marketing expenses, licensee fees and enforcement).
In order to record a licence, the following information must be given:
- whether the licence is exclusive, non-exclusive or sole;
- whether the licence affects all or just some goods or services;
- the date of the licence agreement;
- the name and address of the licensor and the licensee; and
- if applicable, details of and power of attorney from the agent representing the parties.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
No security interest can be registered over a trademark as such. However, recognising that trademark portfolios may represent significant assets, the authorities permit establishment of security in a company’s machinery and plant which, pursuant to the Mortgage Act, includes the company’s intellectual property.
Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Most trademarks, including two dimensional and three dimensional (3D) marks, may be protected as designs, provided that they meet the criteria of novelty and individual character. Of most relevance are patterns or 3D shapes that cannot be perceived as commercial indicators and hence fail to meet the trademark distinctiveness criteria.
Trademarks sufficiently artistic to be classified as ‘works’ may also enjoy copyright protection, acquired by virtue of the creation and without registration.
Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
Norwegian legislation offers no particular protection for online trademarks or domain names. Extensive and exclusive use of an unregistered trademark online, in Norway or towards a Norwegian trade circle, may over time result in use-acquired trademark rights, although the requirements are strict and generally apply only to well-known trademarks. The extensive and exclusive use of a domain name in Norway or towards a Norwegian trade circle could arguably also constitute trademark use and meet the requirements applicable for trademark rights acquired by use.