1 January 2010CopyrightLill Anita Grimstad and Kristine Aarflot

Business brief 2010: Norway

Patents

How do you register or secure patent rights, and is national or international coverage most appropriate?

Patent protection in Norway can be obtained by a national application or by an international application (PCT). Irrespective of the choice, the Norwegian Industrial Property Office (NIPO) will carry out a substantive examination independent of any previous history of the application.

Results from search and examination procedures from major patent offices/jurisdictions will be considered. Patent protection can also be obtained through validation of a European patent (EP). Extension of protection through supplementary protection certificate (SPC) applications is available.

What are the costs of registering a patent, and what are the costs of defending it?

A typical 25-page patent application in Norway costs approximately NOK 100,000 ($17,000), including filing, prosecution and yearly fees during a 20-year lifespan. Norway has not signed the London Agreement, which means that the complete patent must be translated into Norwegian when European patents are validated.

The costs of defending a patent during opposition, administrative re-examination or administrative appeal to NIPO, depend on the case and its complexity. In administrative proceedings, the parties have to cover their own costs and will not be awarded any indemnity costs.

Is there anything unusual about the patent law that companies should be aware of?

Revocation of a patent or restriction of the claims of a patent is possible through the entire lifespan of a patent. Third parties may file a request for an administrative review to NIPO after the end of the nine-month opposition period or after a final decision has been settled in any opposition proceedings.

Such re-examination must be based on arguments such as lack of novelty, inventive merit or industrial utilisation. In cases where NIPO is in doubt whether an invention is in conflict with ethical norms in Norwegian society, it will request an ethical committee to review the case. Traditionally, patents on ‘life’ have been the subject of such discussions.

What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?

The key threat is third-party infringement. In cases of infringement or where there are reasonable grounds to suspect infringement, the patent owner will initiate a warning letter to the alleged infringer in order to stop the infringement.

If the alleged infringer does not respond satisfactorily in due time, the legislation and court system provide IP rights holders with several measures to enforce their rights, the most common being: prohibiting use; fines, damages and compensation; injunctions; preserving evidence; recalling or destroying goods; and customs watch services.

Trademarks

How do you register or secure trademark rights, and what protection do they grant?

Trademark protection in Norway can be obtained through a direct national application or via an international application designating Norway (Madrid Protocol Systems). Exclusive rights may also be obtained on basis-of-use acquired rights in the Norwegian market. Norway is not part of the EU/OHIM system.

A trademark registration gives an exclusive right to use the trademark for the goods and/or services the mark is registered for. The holder of a trademark may of course prevent others from using a confusingly similar mark. A trademark registration lasts for 10 years from the date of application and can be renewed every 10 years.

What are the costs of registering a trademark, and what are the costs of defending it?

The official charges consist of a basic fee of NOK 2,300 ($388), giving protection for 10 years for up to three classes. There are supplementary fees for additional classes. The usual fee for filing through local agents is approximately NOK 6,000 to 7,000 (approximately $1,100), including the official charge.

The costs of defending a trademark during opposition, administrative re-examination or administrative appeal to NIPO are difficult to estimate, and will depend on the case and its complexity. In administrative proceedings, the parties have to cover their own costs and will not be awarded any indemnity costs.

What are the key threats to trademark owners (counterfeiting, passing-off, online infringement, etc.), and what is the best strategy for dealing with infringement?

Trademark owners face several threats, whether or not their trademarks are registered. The key threats are counterfeiting of products and infringement in the terms of a third party’s use of an identical or similar trademark or domain name for the same or similar goods.

As for dealing with infringement on a general basis, the domestic legislation and court system provide IP rights holders with several measures for the enforcement of IP rights, the most common being: prohibiting use; fines, damages and compensation; injunctions; preserving evidence; recalling or destroying goods; and customs watch services.

Private civil enforcement of IP rights is typically initiated by a cease and desist letter to the infringer, asserting the rights and requesting the infringing activity to cease immediately and the infringer to declare that it will refrain from infringing the subject rights again in the future. The rights holder may also seek destruction of any remaining goods, and claim damages and reimbursement of his legal costs. Further, the rights holder may in a cease and desist letter seek supplier details in order to trace the supply chain.

What are the most common mistakes trademark owners make?

The most common mistakes trademark owners make are failing to properly investigate the availability of the mark before using it or applying for registration of the mark, and also choosing a trademark that describes the product or service of interest. Further, many trademark owners seem to believe that because they own the domain name, they own the trademark, which may lead to loss of trademark rights on one side as well as conflicts with any legitimate trademark owner on the other.

Counterfeiting and online piracy

How big a problem is counterfeiting and/or online piracy in your jurisdiction?

As in most countries, the problems of counterfeit goods and online piracy have increased in correlation with the increased use of the Internet as a marketplace. The availability of counterfeit goods via online stores internationally and nationally has made access to such goods easy, and the number of counterfeit cases against vendors who import such goods and/or offer them for resale has grown significantly in the last decade.

To meet these challenges, the Norwegian authorities have in the last few years issued a new Customs Act and Trademarks Act with more flexibility for customs and trademark owners to pursue such cases, and the potential penalty for trademark infringement has been raised from three months to one year in prison.

What industries are particularly at threat?

Easily sold consumer goods such as electronics, clothing, footwear and related accessories are most commonly involved in counterfeit cases.

What are the best strategies for dealing with the problem?

In Norway, a trademark owner may file for a yearly interim court order, which will lay an obligation on customs to confiscate imported goods suspected of being counterfeit. The court order will be valid for one year and may be renewed at expiry if the need for confiscation/threat of import of counterfeit goods is still present.

The new Customs Act also allows customs to confiscate imported goods for up to five days if it suspects that a consignment consists of counterfeit goods. The yearly interim court order is in most cases advisable, as customs’ obligation to keep the goods confiscated is usually extended from five days in accordance with the Customs Act to several weeks under the yearly interim court order.

General

Are there any legislative changes to the IP regime that would make businesses’ life easier?

The new Trademarks Act is expected to enter into force on July 1, 2010. The act introduces some significant changes, such as the possibility of administrative cancellation of trademarks and regional EU exhaustion of rights. International design registrations in accordance with the Geneva Convention will be possible from June 17, 2010.

Lill Anita Grimstad is a partner, head of the legal department and an attorney at law at Bryn Aarflot AS. She can be contacted at: lag@baa.no

Kristine Aarflot is a partner and the chief executive of Bryn Aarflot AS. She can be contacted at: kaa@baa.no

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Jurisdiction reports
1 February 2012   Protecting and enforcing intellectual property (IP) in Norway may seem quite a gamble. Although Norway is an European Economic Area (EEA) member, studies show that the Norwegian Industrial Property Office (NIPO) and the Norwegian courts are both stricter in various areas regarding IP protection than the other Nordic countries.