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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 date or priority date (whichever is first), implying that the application will bar the registration of marks that are 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.
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 usually 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.
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