Before using your trademark in Norway or prior to filing your application, we can assist you in performing both availability and registrability searches.
The purpose of the searches is to find out whether your trademark is eligible for registration and not in conflict with prior rights.
These searches may reveal whether prior filed or registered trademarks exist that are identical with or similar to the trademark of interest to you, and whether these prior trademarks cover identical and/or similar goods and/or services.
Searches may be performed among 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.
The type of search to be performed, as well as costs, will be discussed and agreed upon in advance.
Normally, you will receive our search report with an analysis within four to five working days. However, upon request, a shorter response term may be agreed upon.
In order to assist you with the preparation and filing of a trademark application, 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
- A Power of Attorney executed by the applicant (may be filed later). A simple copy will suffice. No legalisation is necessary.
A trademark may consist of any sign capable of distinguishing the goods or services of a certain entity from those of others. This could for instance be a word, a combination of words, a combination of words and figurative elements, a slogan, a name, a sequence of letters and/or numerals, a figure, a picture, the shape of a product, the packaging, a sound, a colour or colour combination, or a moving mark.
Usually, the NIPO will not require documentary proof in support of any claim of priority – merely indicating the country, filing date and the application number of the application first filed will suffice.
A Norwegian trademark application may comprise any number of goods and/or services. The broadest protection will be obtained by wording the goods/services in as general terms as possible. Norway is a party to the Nice Agreement, and delays and problems may be avoided by, partly or wholly, using designations listed in the International Classification.
The examination of up to three classes is included in the filing fee. Any further classes will be subject to additional fees.
Filing the Application with the Norwegian Industrial Property Office
Applications to register trademarks are handled by the Norwegian Industrial Property Office (NIPO), a government authority organized under the Ministry of Trade, Industry and Fisheries.
The due date for filing a trademark application that claims priority from another application is 6 months from the filing of the first application. This term is not extendable.
The due date for filing a response to a provisional refusal of an international mark and entering the national stage is noted on the notice of provisional refusal that you have received. This term can be met by the timely filing of a request for an extension of term.
For most of our correspondence to and from the NIPO we use a secure web portal. In cases where this is not possible, we rely on couriers.
Examination at the NIPO
All trademarks filed with the Norwegian Industrial Property Office are subjected to extensive examination. Various legal issues are evaluated, including prior rights and distinctiveness. For this reason, it is fairly safe to say that a trademark registration provides a high level of assurance that use of that mark is not in violation of the rights of others.
The time span involved in the examination of a trade mark application is approximately 3-5 months.
If any hindrances or deficiencies are found during the examination, the NIPO will issue an Office Action detailing the reasons for their unfavourable opinion and inviting you to respond by submitting comments and/or amendments to the application.
In the case of a favourable decision, the mark will be published in the Norwegian Trademark Gazette. The opposition period is three months from this publication.
If any hindrances or deficiencies are found during the examination, the NIPO will deal with registrability issues before requesting the fulfilment of formal requirements. The term for replying to an Office Action is usually three months.
Two of the most important registrability issues are that the mark must possess a certain level of distinctive character, and it may not be identical or confusingly similar to trademark rights of other parties, whether these be registered or established on the basis of use.
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. Some clients prefer a complete translation of the Office Action. We welcome you to let us know your preference.
Arguments may be filed in an attempt to overcome the objections or citations. Other alternatives may also be considered. For instance, if trying to overcome a citation (prior rights), an alternative could be to try to obtain a Letter of Consent from the owner of a prior trademark registration.
Should objections with respect to the registrability of the mark be maintained, the applicant will be allowed to file 2-3 submissions arguing against the objections raised before a final decision is made.
Failure to file a timely response will result in the application being shelved, but reinstatement can be granted under certain conditions. Extensions of reply terms may also be obtained. See Responding to Office Actions.
Madrid Protocol - Provisional Refusals
Should you decide to contest a Provisional Refusal issued by the Norwegian Industrial Property Office, the proceedings will enter into a national phase, and a response will have to be filed with the Industrial Property Office.
This term can initially be met by the timely filing of a request for an extension of term.
We will of course be pleased to represent you in the national phase.
Responding to Office Actions
We generally await your comments and instructions before preparing a response to an Office Action. If we do not hear from you, we will routinely monitor the deadline and attend to a timely request for an extension of term.
Extensions of reply terms: The Norwegian Industrial Property Office will allow for extensions of time, when timely requested. An extension of time is usually for 3 months. However; it is possible to request shorter or longer extensions, ranging from 1-6 months. If the 1st extension request is for more than 3 months, for instance 6 months, grounds for the request must be provided, such as negotiations with the intent to obtain a Letter of Consent, an ongoing collection of evidence of use of the mark, etc. In any event, grounds for an extension request must be provided from the 3rd extension request onwards.
Reinstatement: If a deadline is not met, the application will be shelved. However, it can be reinstated if the response is filed and a reinstatement fee paid within two months from the expiration of the deadline. Reinstatement will only be granted once during the examination of the application.
Registration of Trademark
Upon registration, a Certificate of Registration will be issued. We will proof-read the certificate prior to forwarding it to you.
The registration will also be published in the Norwegian Trademark Gazette for opposition purposes. The opposition period is three months from the date of publication. If an opposition is filed, we will forward it to you together with our recommendations. We will also assist you in the opposition process.
A Norwegian trademark registration is valid for 10 years from the filing date. The trademark may be renewed for 10 years at a time.
In order to protect your rights in the best possible way, obtaining registration is not enough. Trademark rights must also be enforced. It is therefore advisable to set up an internal strategy for trademark enforcement. We can assist you in setting up an internal strategy. In the event of trademark infringement, our experts will assist you in dealing with same. More information may be found here.
Refusals & Appeals
A final decision by the First Division of the Norwegian Industrial Property Office to refuse registration 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, their decision may be tried by the regular courts of law – the Oslo District court being the court of first instance.
Our in-house attorneys-at-law will assist you through all steps related to appeals, including administrative procedures as well as litigation. They will use their broad experience when exploring various options for obtaining a registration, and work actively to find a good business solution for you.
Counterfeiting & Border Control
The owner of a trademark registration in Norway will mainly encounter problems related to counterfeiting when the copies are imported, sold and distributed in Norway.
Through a preliminary injunction from the court of first instance, the Customs receive an injunction to stop counterfeit goods that are being imported to Norway. A preliminary injunction can include several trademarks and is normally issued for a year at a time, with the possibility of renewal.
Norway has a different set of rules than the EU when it comes to customs surveillance and border control, and there is currently less risk involved in importing large quantities of counterfeited goods to Norway than to most EU member countries. This has made Norway a country of transit for counterfeited products which are to be sold in the European Union as the border control between Norway and the EU country of Sweden traditionally is not very extensive in relation to fake goods. A preliminary injunction which ensures customs surveillance can prevent this to a larger extent.
The sale of counterfeit goods occurs both in stores and through individuals throughout the country and can be stopped by a petition for the police to prosecute or by a civil action. We have many years of experience with organizing customs surveillance and preventing the sale of counterfeit products.
Oppositions & Infringements
The Norwegian Industrial Property Office carries out ex officio examinations, and will cite prior registrations or pending applications that they find liable to be confused with the mark applied for. However, you may also take action of your own initiative against an application or registration belonging to someone else.
Broadly speaking, you have the following possible courses of action:
Filing a protest during the prosecution of the application: If you file a protest, you will not become a party to the proceedings. However, the applicant will be notified of your protest, and your statements will be taken into account by the Norwegian Industrial Property Office when evaluating the registrability of the mark.
Filing an opposition within three months from the publication of the registration in the Norwegian Trademarks Gazette: You will become a party to the opposition proceedings, and both you and the trademark owner will be given the opportunity to file 2-3 submissions before the NIPO issues a decision.
Filing a request for administrative review: This is an option for example if you did not become aware of the registration until after the expiration of the opposition period, or if your opposition was not successful.
Filing a request for invalidation 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).
Administrative reviews and court actions are of course more expensive than oppositions and protests. It is therefore advantageous to obtain information about new applications and registrations before the expiry of the 3-month opposition period.
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 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. For trademark applications filed before 1 July 2010, these terms are calculated from the registration date.
A request for renewal shall be filed with the Norwegian Industrial Property Office at the earliest one year before, or at the latest six months after the expiration of the registration period. 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 the 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.
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).
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 deletion by way of a court decision and/or an administrative review by the Norwegian Industrial Property Office (NIPO), unless justifiable reasons for non-use exist.
If a trademark has been used only in respect of some of the goods and/or services for which it is registered, the registration can be cancelled only in respect of those goods or services for which it has not been used.
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. A third party needs to request deletion of the trademark registration. Such requests are often filed in connection with a dispute, or in the event a Norwegian Industrial Property Office (NIPO) Examiner cites a trademark registration as obstacle against registration of a younger trademark application.
We strongly advise that you keep proof of use, such as marketing material, catalogues, invoices, letter-heads, etc. The material must evidence use of the mark and needs to be dated.
We have in-house attorneys-at-law with extensive practice who will assist you if your trademark is the subject of a cancellation action, or if you wish to obtain cancellation of a trademark registration that belongs to a third party.