Watch out for Norway: An improving jurisdiction
Studies also show that counterfeits are often imported from Asia through Norway, and then spread from Norway throughout Europe. Help is at hand: Norwegian IP legislation is under revision at present.
But still, when protecting and enforcing IP in the Nordic region, the order in which you act in different jurisdictions is crucial, as is having your national legal counsel collaborating internationally on the course of action.
The implications of EEA membership
In 1972 and 1994, Norway declined membership of the European Economic Community and the European Union (EU), respectively. The EU is, however, Norway’s most important market and trade partner.
Norway’s relations to the EU are today defined and governed by the EEA Agreement, signed in 1992. The agreement is based on the ‘four freedoms’ of the European community, and was made between the then seven states of the European Free Trade Association (EFTA) and the 12 member states of the EU.
Today, EFTA has four member states: Switzerland, Lichtenstein, Iceland and Norway, but only Lichtenstein, Iceland and Norway have joined the EEA Agreement. The EEA agreement allows Iceland, Liechtenstein and Norway to participate in the EU’s internal market without a conventional EU membership.
In exchange, they are obliged to adopt all EU legislation related to the single market, except laws on agriculture and fisheries. This also includes all material IP legislation, but not all legal procedures, such as customs regulations.
For all practical purposes this means that Norway (and the two other members of EEA) will continue to harmonise its IP legislation with that of the EU, and all EU legislation in this area will be implemented in Norwegian law in due course.
The European Patent Convention
Norway participated in the negotiations leading up to the signing of the European Patent Convention (EPC) in 1973, but did not ratify the convention when it entered into force in 1977.
The Norwegian Patent Act was, however, in most material issues, already harmonised with the rules of the EPC. Upon joining the EEA Agreement, Norway accepted the obligation to implement all material rules of the EPC and later EU patent legislation such as Directive 98/44/EC on the legal protection of biotechnological inventions.
Until January 1, 1992, Norway upheld an exception on the patentability of products related to food and drugs. When this exception was cancelled in 1992, Norwegian patent law was fully harmonised with EU patent law in all material ways, and has continued this harmonisation on all legislative levels.
Norway ratified the EPC in 2007 and was a full member of the European patent family, including the European Patent Office system, by 2008, which means that a European patent may now include patent protection in Norway.
The Norwegian Marketing Control Act
A revised Norwegian Marketing Control Act came into force on June 1, 2009, as a result of the Norwegian implementation of Directive 2005/29/EC of the European Parliament and of the Council of May 11, 2005, concerning unfair business-to-consumer commercial practices in the internal market.
Although primarily a consumer protection legislation, the Marketing Act plays an important role as supplementary legislation to trademark law, design law and copyright law in Norway. Chapter 6 of the Marketing Act (Protection of the interest of traders) contains various articles covering the overall requirement of “good business practice” in the course of trade, the protection of trade secrets, know-how and the protection against unfair copying of products.
Norwegian court practice in this field is extensive, and knowledge of this practice is very important to all IP practitioners doing business in Norway.
The Norwegian Trademark Act
As a member of the EEA, Norway adapts its trademark law to the ongoing legal development in the EU. This includes implementing the EU Trademark Directive, which came into use on January 1, 1994.
Further harmonisation of Norwegian trademark law to EU law was carried out by the revised Norwegian Trademark Act, which came into force on March 26, 2010. The new trademark act did not lead to any significant material changes from the prior act, but involved further harmonisation of Norwegian law with EU law. With regard to legal unity within the EU, Norway must consider the directive when assessing questions of Norwegian trademark law.
Under the EEA Agreement, practice from the Court of Justice for the EU (CJEU) regarding the interpretation of the directive is not legally binding for Norway, but the case law has nonetheless become paramount in the interpretation of Norwegian trademark law.
It should also be mentioned that the application of Norwegian trademark law is largely based on interpretation of guidelines given by the CJEU rather than studying the traditional sources of law.
The Norwegian Copyright Act
The Ministry of Culture is at present working on a full revision of the Norwegian Copyright Act of 1961. Th e aim is to make the act more accessible in both language and format, aft er several amendments in recent decades.
The ministry says that “the aim is to secure a good balance between the interests of right holders and the public”, and that this balance should be refl ected explicitly in the act.
The ministry is also assessing how copyright and artists’ economic interests may best be protected in the digital age.As part of this revision, the Ministry of Culture has already conducted a hearing into proposals for simplified enforcement of illegal filesharing and other infringements of copyright by digital means online.
The aim is to limit illegal file-sharing, and at the same time stimulate the use of legal digital services. The proposal covers access to information on the IP addresses of infringers, and compelling Internet service providers to block access to infringing material. This part of the Norwegian revised copyright legislation will be implemented separately and before the rest of the revised Copyright Act.
It is at present unclear when the amended Copyright Act will be presented, and the Ministry of Culture keeps its cards close to its chest. Strengthened legislation for IP enforcement The Ministry of Justice has circulated a proposal for strengthened IP legislation, covering amendments in the Patent Act, the Trademark Act, the Design Act and the Copyright Act. Amendments to the Trade Name Act and the Marketing Act have also been suggested, as well as the Civil Procedures Act, related to obtaining evidence IP infringement cases. The proposed legislation is expected in 2012.
This proposal covers both civil and criminal sanctions, and it is proposed that sanctions are modelled uniformly in all IP areas. A significant strengthening of the rules regarding fair compensation and tort is also suggested, including that in cases of deliberate or grossly negligent infringements, the right holder will be entitled to at least twice the amount of a fair licence.
The purpose of the revision is to strengthen the right holder’s position in infringement cases, and to improve the conditions for establishment and investment in IP-related business, innovation and brand building. The aim is to secure a level of IP protection in Norway comparable to that in the EU. Keep a close eye on Norway—strengthened IPR protection is under way.
Bente Holmvang is a partner in Bull & Co Advokatfirma AS. She can be contacted at: bho@bullco.no
Kristine Madsen is a partner in Bull & Co Advokatfirma AS. She can be contacted at: kmm@bullco.no
