Business brief 2011: Norway
Patents
How do you register or secure patent rights, and is national or international coverage most appropriate?
Protection by patent in Norway is obtained by a national application, by nationalisation of a PCT application before the 31-month term, or by validation of a European patent. Extension of the protection of drugs after expiration of the 20-year term may be obtained through a supplementary protection certificate.
A patent application first filed by the Norwegian Industrial Property Office (NIPO) will be evaluated in six to nine months. The initial examination may be based on an English language application.
What are the costs for obtaining a patent, and what are the costs of defending it?
Official fees for obtaining a patent based on a 20-page application will amount to about €1,000; procedural costs are not included. The official validation fee of a European patent is about €140. Norway has not signed the London Agreement, and the complete specification must be in Norwegian. The applicant does not need a patent attorney domiciled in Norway; however, all office communications will be in Norwegian.
An opposition against a patent must be lodged within nine months of the patent grant, and costs at least €4,000. Defending a patent before the court will incur costs at the same level as in other European countries.
Where can you find information on existing patents in your jurisdiction (i.e. online database, patent office request, etc.)?
NIPO has recently made upgrades to the database available on the NIPO website. It provides search options for applications and validations as well as patents granted by NIPO. Further enhancements are forthcoming, including detailed case history.
Is there anything unusual about the patent law that companies should be aware of—what are the most common mistakes businesses make?
The Norwegian patent legislation is harmonised with the EPO. However, the practice of Norwegian examiners may be stricter, such as the evaluation basis in exemplification when deciding about an acceptable scope of protection.
What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?
The key threats are infringements. When infringement is suspected, the best strategy is to send a warning letter to the alleged infringer in order to stop the infringement. If the infringement continues, the best measure to enforce the rights will initially be through interlocutory injunction and then to institute legal proceedings.
Have there been any changes to the patent law(s) in the last 12 months?
On July 1, 2010, the requirement that applicants who are not residents of Norway must be represented by an attorney domiciled in Norway was repealed. Guidelines have also been harmonised with amendments made at the EPO, with reference to EPO Board of Appeal Case Law.
Trademarks
How do you register or secure trademark rights, and what protection does it grant?
Protection of a trademark is obtained through establishment by use, or registration through a national application, or by designating Norway in an international registration under the Madrid Protocol. Norway is not part of the CTM system.
Both distinctive signs and signs lacking distinctiveness may acquire protection through use, without registration. A sign is considered established by use when and as long as it is known as a trademark within the relevant circles of trade.
What are the costs for registering a trademark, and what are the costs of defending it?
NIPO charges an application fee of about €300. Each additional class exceeding three costs €80. 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 of about €500 to €650 for preparing and filing an application in up to three classes.
What are the key threats to trademark owners (counterfeiting, passing-off, online infringement, etc.), 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 and more serious threat.
Criminal and civil procedures are available to enforce a trademark right against infringement, and the best strategy is to use available measures once the holder becomes aware of the infringement, in order not to lose position due to passivity. Civil enforcement will normally be initiated by a cease and desist letter to the infringer.
Public prosecution will only take place at the request of the injured party, unless it is required in the public interest. In practice, criminal prosecutions are rare, simply due to lack of police resources.
The following procedures are available: infringement proceedings, preliminary injunctions and border enforcement. In court procedures, the following remedies are available: prohibition on continued/future infringement; compensation damages; alteration of an infringing sign or removal of a sign from the goods; recalling or destruction of the infringing products; deletion of or assignment of domain registration to the trademark holder; imprisonment and fines.
What are the most common mistakes trademark owners make?
Trademark owners failing to take action as early as possible when they become aware of infringement risks, limiting their possibilities for prosecution; and evidence and 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.
Have there been any changes to the trademarks law(s) in the last 12 months?
A new Trademarks Act entered into force on July 1, 2010. It brings essential amendments within several fields:
