Application Process

Searches/Availability

Before filing an application to register a trademark in Norway, or in the EU, or before using a trademark, we can assist you in performing various searches.

These searches may reveal possibly conflicting trademarks, whether prior filed or registered.

Searches may be performed amongst pending or registered trademarks, company names and domain names.

We can also attend to in-use searches. Both word elements and device elements may be subject to searches.

Information about costs will be provided upon request.

Filing Requirements

In order to file a trademark application in Norway or in the EU, we will need the following:

• The full name and address of the applicant

• A representation of the mark; in the case of device marks or word/device combination marks preferably in .jpg format.

• A specification of the goods and/or services for which protection is sought

Classification problems may be avoided by, partly or wholly, using designations listed in the International Classification of goods and services.

• In Norway: a Power of Attorney executed by the applicant (may be filed later). A simple copy will suffice. No legalization is necessary.

• In the EU: no Power of Attorney is required

• If you are claiming priority from an earlier application, we need to indicate the country, filing date and the application number of the earlier application(s).

• The NIPO does usually not request a priority document.

• The EUIPO will request a priority document.

A Norwegian or a EU trademark application may comprise any number of goods and/or services.

Filing the Application with the NIPO or EUIPO

Applications to register Norwegian trademarks are handled by the Norwegian Industrial Property Office (NIPO), a government authority organized under the Ministry of Trade, Industry and Fisheries.

Applications to register trademarks in the EU are handled by the European Union Intellectual Property Office (EUIPO).

In order to claim priority from a previously filed application, it must be filed in the NIPO or in the EUIPO within 6 months to be counted from the filing date of the first application. This term is not extendable.

We correspond with the NIPO and the EUIPO through secure web portals.

Examination at the NIPO or the EUIPO

All trademarks filed with the NIPO or EUIPO are subject to extensive examination. Various legal issues are evaluated, including distinctiveness and prior rights (the latter in Norway only, not in the EU unless an opposition is filed).

If no objections are raised by the NIPO Examiner, the mark will proceed to registration followed by publication in the Norwegian Trademark Gazette.

If no objections are raised by the EUIPO Examiner, the mark will proceed to publication in the EU Trade Marks Bulletin.

The opposition period is three months from the date of publication.

If objections are raised, office actions will issue, and replies may be filed within certain deadlines.

Official Actions

The NIPO or the EUIPO will issue Office Actions if reasons for refusal are found during examination, or if oppositions are filed.

Upon receiving an Office Action, we will provide you with a summary of its content, together with our analysis and suggestions for alternative courses of action. A complete translation of the Office Action will follow upon request.

Arguments may be filed in an attempt to overcome the objections or citations. Other alternatives may also be considered, such as trying to obtain a Letter of Consent from the owner of a prior trademark registration.

The applicants are allowed to file several submissions in the NIPO/EUIPO in order to try to overcome the objections or citations.

A negative decision may be appealed within 2 months from the date the NIPO rendered a decision. The Norwegian Board of Appeal for Industrial Property Rights is an independent, court-like, body under the Ministry of Trade, Industry and Fisheries.

Madrid Protocol - Provisional Refusals

Should you decide to contest a Provisional Refusal issued by the NIPO or the EUIPO, the proceedings will enter into a national phase, and a response will have to be filed with the office that issued the provisional refusal.

If required, the term for filing a response may be extended upon request.

Responding to Office Actions

A response is prepared and filed upon receipt of your comments and instructions to proceed.

If required, the term for filing a response to the office action may be extended.

In Norway, the first two extensions of terms are for 6 months. No grounds for the requests need be provided. If additional extension requests are required, grounds must be provided. Acceptable grounds are negotiations with the attempt to obtain a Letter of Consent, ongoing collection of evidence of use of the mark, etc.

The above information with regard to extension of terms does not apply to opposition cases.

Registration of Trademark

Upon registration, the NIPO or EUIPO will issue a Certificate of Registration. It will be forwarded to you by email.

The registration will also be published for opposition purposes. The opposition period is three months from the date of publication. If an opposition is filed, it will be forwarded to you together with our recommendations.

A Norwegian or European trademark registration is valid for 10 years from the filing date. The trademark may be renewed for 10 years at a time.

Refusals & Appeals

A final decision to refuse registration in Norway by the First Division of the NIPO may be appealed to the Norwegian Board of Appeal for Industrial Property Rights within two months from the date of the decision.

Should the Board of Appeals uphold the decision to refuse registration, the decision may be tried by the regular courts of law – the Oslo District court being the court of first instance.

Oppositions & Infringements

The NIPO / EUIPO carries out ex officio examinations. Prior registrations or pending applications will be cited as obstacles if likelihood of confusion is found.

However, right owners may take various types of action.

A protest may be filed prior to the examination NIPO / EUIPO being completed. The party having filed the protest will not become a party to the proceedings. However, the applicant will be notified of the protest. The protest, i.e. the arguments presented, will be taken into account by the office when deciding on the matter during the examination of the application.

An opposition may be filed within three months from the publication of the registration. The party having filed the opposition will become a party to the opposition proceedings. Both parties will be given the opportunity to file submissions before the NIPO / EUIPO issues a decision.

A request for administrative review may be filed for example if you did not become aware of the registration of a trademark until after the expiration of the opposition period, or if your opposition was not successful.

A request for invalidation of a Norwegian trademark may be filed at the Courts of Oslo.

A court action may also become necessary in instances of actual unjustified use of marks that are confusingly similar to yours (infringement actions).

Our in-house attorneys-at-law will assist you through all steps relating to oppositions, appeals and infringements, including both administrative procedures and litigation.

Renewals, Amendments & Assignments

A Norwegian or European trade mark registration is initially valid for 10 years from the filing date. The mark can be renewed indefinitely for 10 years at a time.

A request for renewal may be filed with the NIPO /EUIPO one year before or six months after the renewal deadline. Late renewals filed during the aforementioned 6-months grace period are subject to the payment of an additional fee.

It is not necessary to present evidence of use when requesting renewal of a registered trademark.

Recording assignments, licenses, name changes, etc. is not compulsory in Norway. However, for notoriety reasons and to avoid future disputes, we strongly advise that all changes related to your registered trademark are properly recorded with the Norwegian Industrial Property Office.

Surveillance

We offer a variety of surveillance services to suit your needs, e.g. –

• Monitoring of all trademarks accepted for registration, allowing you to file timely oppositions against marks which are liable to be confused with your trademarks.

• Monitoring of company names accepted by the Register of Business Enterprises

• Monitoring of domain names

• Monitoring of the examination and issuance of status reports with respect to a specific application.

• Monitoring of all trademarks filed in the name of a specific proprietor (competitor surveillance).

Use Requirement

A registered trademark should be taken into use within 5 years from the termination of the registration process. Any non-use period should not exceed 5 years. If use of a trade mark has been suspended during an uninterrupted period of 5 years, the registration may be subject to cancellation, wholly or partially, by way of a court decision and/or an administrative review unless justifiable reasons for non-use exist.

The mark must be used either in its registered form, or in a form that does not differ significantly from the registered form.

Use of a trade mark with the consent from the registered owner (e.g. by a licensee) is deemed to constitute use by the registered owner.

Use of a trademark on goods or on the packaging thereof in Norway, solely for export purposes, is also considered use of the mark.

A trademark registration is not automatically deleted in Norway; however, it may be deleted upon the request of a third party.

We strongly advise you to keep proof of use of the mark, such as marketing material, catalogues, invoices, letter-heads, etc. The material must evidence use of the mark and needs to be dated.