1 June 2012CopyrightKristina Edén Johnsen

Business brief 2012: Norway

Patents

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

Protection of a patent in Norway is obtained by a national application, by nationalisation of a Patent Cooperation Treaty (PCT) application within the 31-month term, or by validation of a European patent.

A national patent granted in Norway is valid within the Norwegian territory. Seeking protection in a number of countries may be costly compared to obtaining protection through a PCT application or validation of a European patent. The choice of protection in Norway will therefore depend on the applicant’s overall strategy and the number of countries it wishes to obtain protection in.

Norway has not signed the London Agreement, and the complete specification must be in Norwegian. The applicant will not need an attorney domiciled in Norway, but all office communications will be in Norwegian.

What are the costs of obtaining and defending a patent?

Official fees for obtaining a patent (national or PCT application) based on a 20-page application amount to about €1,000 ($1,300), including fees in connection with examination and grant of the patent. For companies with fewer than 21 employees, the total official fees are about €300 ($400). The official fee for validation of a European patent is €140 ($180).

The applicant must also account for possible attorney fees for filing the application. This charge will normally amount to between €1,300 ($1,700) and €1,900 ($2,500). Expenses for dealing with office actions will be extra.

A granted patent can be challenged either by opposition proceedings or by a nullity action in front of the regular courts. The costs involved in such procedures vary, depending on the technical and legal complexity of the case. In court suits, the losing party normally pays the winning party’s cost.

Where can you find information on existing patents in your jurisdiction?

The Norwegian Industrial Property Office’s (NIPO’s) online database provides search options for applications, validations and patents granted by NIPO: www.patentstyret.no.

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

One key threat is invalidity claims by a third party, often resulting in revocation of the patent, in part or in whole. Moreover, activities involving infringing products or other action representing violation of the patent owner’s protection are relevant situations for a patent owner.

Patent disputes are common, and the first step will normally be a cease and desist letter to the alleged infringer, with regard to an out of court-settlement. Criminal and civil procedures are available should the parties not succeed in reaching an arrangement. In these procedures, the infringer often puts forward a counterclaim for invalidation.

Have there been any changes to the patent law(s) in the last 12 months?

There have not been any changes. It should be mentioned that there has been an amendment to the patent regulations, allowing NIPO to establish cooperation with other patent authorities with regard to the use of office actions on patentability.

Trademarks

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

Protection of a trademark is obtained through establishment by use, registration through a national application or by designating Norway in an international registration under the Madrid Protocol.

What are the costs for registering and defending a trademark?

NIPO charges an application fee of about €300 ($400). Each additional class exceeding three costs €80 ($100). There is no official fee in connection with re-examination of an application, or with registration of the mark. An applicant should also account for attorney fees, which will amount to about €500 ($670) if no provisional refusal or other office actions are issued, and no oppositions are filed by third parties.

“An interim court order is recommended, because it puts an obligation on customs to retain suspect counterfeit goods, and also grants a longer term to solve a retention matter.”

A registered trademark can be challenged either by opposition proceedings within three months of publication, or by a nullity action in front of NIPO or the District Court of Oslo. The costs involved in such procedures vary, depending on the legal complexity of the case. In court suits, the losing party normally pays the winning party’s costs.

What are the key threats to trademark owners and what is the best strategy for dealing with infringement?

The main threats are import and sales of counterfeit products and infringement by a third party’s use of identical or similar signs. A third party’s domain registration of the holder’s trademark is also a problem. Increased sales of infringing products over the Internet are becoming a more serious issue.

Criminal and civil procedures are available to enforce a trademark right against infringement. Civil enforcement will normally be initiated by a cease and desist letter to the infringer.

Public prosecution will take place only at the request of the injured party, unless it is required in the public interest.

The following civil procedures are available: infringement proceedings, preliminary injunctions and border enforcement. In court procedures, the following remedies are available: prohibition on continued/future infringement; compensation and damages; alteration of an infringing sign or removal of a sign from the goods; recall or destruction of the infringing products; deletion, or assignment, of domain registration to the trademark holder; imprisonment and fines.

What are the most common mistakes trademark owners make?

Trademark owners fail to take action as soon as they become aware of infringement risks, limiting their possibilities for prosecution, especially because evidence of infringing products may no longer be available. A delayed reaction may also be seen as the trademark holder’s toleration of the existence of the younger sign.

Trademark owners should investigate the Norwegian legislation, trademarks register and the Norwegian market before introducing their marks. Trademark owners should also be aware that the Norwegian Trademarks act has a use clause, which leaves a mark open to invalidation for non-use over a continuous period of five years. The trademark owner should be able to document actual use of the mark in Norway.

Have there been any changes to the trademark law(s) in the last 12 months?

A new Trademarks Act entered into force on July 1, 2010, and there have not been changes to the legislation since. The 10th edition of the Nice classification list applies in Norway from January 1, 2012.

Counterfeiting and online piracy

How big a problem is counterfeiting in your jurisdiction?

Import and sales of counterfeit products is an increasing problem in Norway. The Internet is the fastest growing channel for marketing and sale of infringing products. Illegal downloading of copyright-protected music, films, books and games is also a big problem.

What industries are particularly at threat?

Many industries are at threat today: pharmaceuticals, music, film, clothing, perfume, electronics, software and toys. Customs is registering an increasing volume of counterfeit imports each year.

What are the best strategies for dealing with the problem?

The owner of a trademark, patent, design or copyright should, first of all, establish customs surveillance. This is possible through a general application, which applies for one year (extendable), or through a general interim court order, which may be renewed every year. This can also be obtained for specific importer(s) or shipment(s).

An interim court order is recommended, because it puts an obligation on customs to retain suspect counterfeit goods, and also grants a longer term to solve a retention matter before taking further legal steps.

The right holders should follow up all counterfeit activities in order to avoid a scenario where several small shipments slip through the net, as counterfeiters often ship in small quantities to avoid prosecution.

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More on this story

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.