Trade mark rights are governed by the Norwegian Trade Marks Act (Act No 8 of 26 March 2010). In addition, preparatory works and case law, in particular the Supreme Court precedents, elaborate on and interpret the statutory provisions in the Trade Marks Act.
Norway is a part of the European Economic Area (EEA), regulated in the EEA Act, and is thus required to harmonise most major parts of its legislation with EU law. Due to the EEA Agreement, Norway has implemented several of the EU regulations and directives into its national law, such as Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008, to approximate the laws of the member states relating to trade marks, as well as associated regulations. Accordingly, case law from the Court of Justice of the European Union carries significant weight when interpreting the Norwegian Trade Marks Act.
Norway is also a member of the following international treaties regarding trade marks:
Different types of trade marks are recognised in the Norwegian legal system, including word marks, figurative marks, combined marks, shape marks, position marks, pattern marks, colour marks, sound marks, motion marks, multimedia marks and hologram marks.
Collective marks and a guarantee or certification marks may also be registered. With a collective mark, a society or other organisation acquires an exclusive right for its members to use a trade mark for goods or services in an industrial or commercial undertaking.
As for the guarantee or certification mark, this type of mark is applicable to a public authority, foundation, company or other organisation that establishes standards for, or conducts testing on, goods or services. The mentioned organisations may acquire an exclusive right to use a trade mark for such goods or services to which the standards or the testing apply.
There are no statutory trade marks under Norwegian law.
Marks that are famous outside Norway, but are not yet in use in the country or registered in the Norwegian Trade Mark Register, are not automatically protected as a trade mark in Norway. To obtain protection, the trade mark must be considered well known as someone’s trade mark by the relevant consumers in Norway.
A Norwegian trade mark registration is valid for a period of ten years from the date of filing. The registration may subsequently be renewed for ten years at a time, counting from the expiration of the previous period. Thus, the registration can be maintained for an unlimited period of time.
Unregistered trade marks enjoy protection as long as the respective protection requirements with regard to use are met. See 3.1 Trade Mark Registration for information on the requirements.
Under Norwegian law, once goods bearing a trade mark are put on the EEA market by the owner of the mark or with the owner’s consent, the owner is no longer entitled to oppose the use of the trade mark within the EEA territory. The owner’s monopoly is exhausted.
However, this does not apply if the owner has legitimate reasons to oppose further commercialisation of the goods, such as if the goods in question have been altered or modified after being placed on the market.
In Norway there are no requirements to use symbols such as "®" or "TM" in order to denote that a mark is a protected trade mark. This is optional, and has no influence on the opposability of the trade mark owner’s right.
In order to use the symbol "®", the trade mark must be registered. Use of the symbol without registration may be a violation of the Norwegian Marketing Control Act. The symbol "TM" may be used even if the trade mark is not registered.
There are no formal requirements or specific procedures that apply to the assignment of trade marks, and no approval from the Norwegian Industrial Property Office (NIPO) is required.
However, for evidential purposes in case of disputes, it is generally recommended that agreements on assignment are concluded in writing.
There are no formal requirements or specific procedures that apply to the licensing of trade marks in Norway, and no approval from NIPO is needed.
However, for evidential purposes and for the owner to precisely identify the extent and scope of the licence, it is generally recommended to conclude license agreements in writing.
Different types of licences may be granted:
A licence can be perpetual.
The Norwegian Trade Marks Act stipulates that if the right to a registered trade mark has been assigned to another person, this can be registered in the Norwegian Trade Mark Register and be published at the request of one of the parties.
The same applies with respect to a licence for a trade mark that has been registered or for which an application for registration has been filed. The same also applies if a registered licence has been assigned or has lapsed.
There are no further requirements that must be met for licences or assignments to be valid.
During the application process, it is possible to assign an application for a trade mark or grant a licence in relation to it.
Legislation to accept a trade mark as security was recently passed by the Norwegian legislature (Storting) and came into force on 1 March 2023.
According to the new legislation that came into force on 1 March 2023, a registered trade mark can be subject to execution or any other separate enforcement proceedings by creditors.
A trade mark holder can achieve trade mark protection in two ways:
The Norwegian system provides equal protection for registered trade marks and trade marks that obtain protection through use. However, as long-term extensive and intensive use is required to achieve protection through use, registration is often the more practical alternative. In addition, trade mark protection established by use may be limited to a part of the country, while registration provides nationwide protection. There are also obvious benefits to having an official registration certificate, which can only be obtained through registration.
The Norwegian Trade Mark Register is administered by NIPO. NIPO provides a database that is publicly available online and that contains all marks applied for, registered or cancelled.
Before filing a trade mark application, it is recommended to carry out a search for prior trade marks in the Norwegian Trade Mark Register, to assess whether others own the right to an identical or similar trade mark. For a fixed price, NIPO also offers to conduct a preliminary search.
The term of registration is ten years from the date of filing the application. Thereafter, the registration may be renewed for ten years at a time, on an ongoing basis.
A request for renewal of a trade mark must be in writing and filed with NIPO. The request may be filed no earlier than one year before the registration period expires.
The renewal of the trade mark is subject to a stipulated fee. Since renewing the right is voluntary, NIPO does not invoice the renewal fee. To avoid an additional fee, the request for renewal must be filed and the renewal fee paid before the registration period expires. If the trade mark owner fails to do so, and does not pay the renewal fee and late payment fee within the final deadline of six months after the expiry date, the trade mark registration will expire.
A trade mark registration may be updated or refreshed if the changes are insignificant and do not affect the overall impression of the trade mark. More significant changes require an application for a new trade mark.
Updated and refreshed trade marks must be registered in the Norwegian Trade Mark Register and then published, to maintain the protection obtained by the registration. A stipulated fee must be paid to NIPO.
An application for registration of a trade mark may be filed online on NIPO’s website. Any natural or legal person can file an application. The application must include:
All the types of signs mentioned in 1.2 Types of Trade Marks may be subject to registration.
At the time of publication, it is required that the trade mark be represented graphically. However, in order to achieve conformity between Norwegian legislation and the EU directive 2015/2436, this requirement will soon be abolished. When the new legislation comes into force, the only requirement will be that the trade mark is presented in a clear and precise manner that makes it possible to determine the scope of protection of the trade mark holder. This change will expand the categories of signs that are eligible for protection.
The Norwegian system does not require the trade mark to be in use before the registration is issued. However, to maintain the protection, Norwegian legislation requires the trade mark to be used within five years after the date of registration. The same applies where use has been discontinued for five years.
In the case of non-use, the registration will be deleted. This does not apply if there are reasonable grounds for the non-use or discontinuation of the mark.
The Norwegian system does not allow for registration of series marks.
In the application process, NIPO examines whether the trade mark applied for infringes any previously registered trade marks. The assessment that is carried out determines whether potential consumers may confuse the trade mark with an already registered one, or whether consumers are likely to believe that there is a connection between the owners of the trade marks.
A prior owner of a trade mark registration may consent to the registration of a trade mark that would otherwise conflict with the older mark. The applicant is responsible for obtaining and submitting a letter of consent to NIPO. The letter of consent should include information on the holder of the older registration, information on the applicant, as well as the precise scope of the consent. It must be clearly stated that consent is given to register the trade mark.
Third parties have the right to file an objection to a registration during the registration procedure. There is no requirement that the third party in question has a particular standing or commercial interest in the case. An objection should be in writing, justified and submitted to NIPO. The applicant will be notified by NIPO that an objection has been submitted.
The Norwegian system allows applicants to make insignificant changes to an application for a trade mark registration during the process of registration, provided that the changes do not affect the overall impression of the trade mark. The list of goods and services applied for cannot be extended, but may be limited.
The application may be withdrawn at any time during the registration procedure.
It is possible to divide a trade mark application into several applications. The applicant will have to pay a stipulated fee for each new application. A divisional application must be filed before the original application is processed and cannot include goods and services that were not included in the original application.
A request for division must contain the original application number, as well as information on the goods and services with the associated class number included in the original application that are to be included in the new application(s).
See 4.6 Revocation, Change, Amendment or Correction of an Application.
A trade mark application may be denied registration by NIPO on a number of grounds. The most relevant grounds for refusal are:
The applicant may overcome an objection raised by NIPO by rectifying the deficiencies pointed out within a reasonable time limit stipulated by NIPO.
If the applicant has not commented on or rectified the deficiencies before the time limit expires, the application will be rejected.
A refusal from NIPO may be appealed by the applicant to the Norwegian Board of Appeal for Industrial Property Rights (“Board of Appeal”).
The appeal must be in writing and submitted to NIPO no later than two months after information on the refusal was given to the party in question. The appeal must include:
The appeal is subject to a stipulated fee.
A decision by the Board of Appeal may be brought before the ordinary courts.
Norway participates in the Madrid system. For an international registration to take effect in Norway, the general requirements for registration in Norway must be met (see 4.9 Refusal of Registration). NIPO is the relevant authority in cases concerning international registrations of trade marks and will conduct the examination process. If the requirements for registration are not met, NIPO will refuse, in full or in part, to grant effect to the international registration in Norway.
Opposition to a trade mark registration must be submitted to NIPO within three months after the date of publication of the registration.
Opposition to a trade mark registration must be filed based on one or more of the grounds mentioned under 4.9 Refusal of Registration.
Any natural or legal person can file an opposition. The opponent does not need to be the owner of a trade mark or a trade mark registration to file an opposition, or have any commercial interests at stake. Representation by an attorney is not mandatory. Filing an opposition is free of charge.
When an opposition is submitted, NIPO will send the opposition to the owner of the trade mark registration, who is entitled to file a counter statement. NIPO will then determine whether further statements by the parties are needed, before the opposition is handled by a new case officer, independent of the one who registered the trade mark.
The opposition is processed without an oral hearing, and a final decision is usually made within four months after both parties have presented their comments and opinions.
The losing party may challenge NIPO’s decision by filing an appeal to the Board of Appeal within two months of the decision being served upon the respective party.
The parties may request oral proceedings before the Board of Appeal, which request is likely to be accepted if the Board of Appeal finds this suitable for the case at hand.
A decision from the Board of Appeal can be appealed to the Oslo District Court.
Cancellation and revocation proceedings may be filed before the courts or conducted by way of an administrative review by NIPO.
A request for an administrative review may be made when the opposition time limit has expired, and any opposition proceedings have been settled with a final decision from NIPO.
Revocation proceedings on the grounds of lack of genuine use can be filed five years after the registration date at the earliest (see 4.2 Use in Commerce Prior to Registration). All other invalidation actions can be filed without any specific time limit. This applies to both cancellation proceedings before the courts and administrative reviews.
The registration of a trade mark may be invalidated if the registration contravenes the conditions set out in 4.9 Refusal of Registration.
A trade mark registration may be deleted on the basis of one or more of the following grounds:
A revocation or cancellation proceeding may be initiated by any person with a legal interest in the matter. However, this is usually only the owner of an older trade mark or of an older registration, or a licensee who is considered to have a legal interest in the matter when the proceedings are initiated, due to prior rights.
In addition, legal action based on the grounds mentioned in 4.9 Refusal of Registration may also be initiated by NIPO.
Revocation or cancellation proceedings may be brought before both NIPO and the civil courts.
A registered trade mark may be considered completely or partially invalid depending on whether the legal grounds for revocation or cancellation apply to all or just some of the goods or services for which the trade mark is registered.
It is not possible to amend a trade mark during revocation and cancellation proceedings. However, the list of goods and services may be limited.
Actions involving revocation/cancellation and infringement may be heard together by the court.
There are no special procedures to revoke or cancel marks that have been filed fraudulently under the Norwegian system.
There are no deadlines for filing infringement lawsuits in trade mark cases under Norwegian law.
Norwegian law equates registered and unregistered marks, and the owners of such marks may pursue infringement the same way. The main action to pursue infringement is to seek a preliminary injunction or to initiate regular infringement proceedings.
The trade mark owner should initiate their intention to pursue infringement by sending a warning letter to the alleged infringer, demanding the infringing use to cease within a certain period of time, and threatening to pursue the matter in court in case of non-compliance. Failure to initiate with a warning letter may affect the court’s ruling on legal costs in a subsequent case.
A trade mark owner may pursue cybersquatting with a complaint to the Norwegian Domain Complaints Board (Domeneklagenemnda). This allows the trade mark owner to claim transfer or deletion of the domain name if:
However, this option is only available with respect to Norwegian domain names ending in “.no”. The trade mark owner must take action within three years of registration of the infringing domain.
Because cybersquatting has not really been considered to constitute trade mark infringement per se, pursuing cybersquatting before the courts is rarely fruitful, unless the trade mark owner is able to prove that the use of the domain name has been infringing on the owner’s trade mark rights.
Dilution of the trade mark is not in itself enough to pursue infringement, unless the use also fulfils the standard conditions for infringement.
The parties to an infringement action will necessarily be the registered trade mark owner and the alleged infringer. In addition to the trade mark owner, a licensee may bring legal proceedings concerning trade mark infringement within the licensee’s territory, unless otherwise agreed (Section 63 of the Norwegian Trade Marks Act).
The right to file an infringement action applies to everyone with an established right to a trade mark, either by registration or by use. Making a trade mark application alone is also sufficient to pursue infringement, but infringement claims will only succeed if the court finds it likely that the conditions for registration of the trade mark are fulfilled.
The legal system in Norway generally permits class actions for all cases. There are no special regulations for trade mark cases in this regard, and a trade mark case may proceed as a class action if the case and the group members meet the general conditions as stipulated by the Norwegian Act relating to mediation and procedure in civil disputes (NDA) chapter 35.
The main conditions are:
In practice, class actions are not however used in trade matters.
There are no mandatory prerequisites that need to be undertaken before bringing an infringement action before Norwegian courts. However, it is customary to issue a warning letter to the person(s) or legal entity against whom or which action may be brought, with information about the claim and the grounds for the claim.
Lawsuits in trade mark matters follow the same general regime provided under the NDA.
The initial pleading (writ of summons) must be filed to Oslo District Court, which is the mandatory legal venue for trade mark disputes in Norway. The writ of summons will provide a basis for the defendant to consider the claims and prepare the case, and for the court to hear the case in a sound manner. The pleading must state the claim and the outcome the claimant is requesting by way of judgment, the factual and legal grounds upon which the claim is based, and the evidence that will be presented.
The pleading may be supplemented with additional claims, arguments and evidence up until two weeks prior to the main hearing, unless the court sets a different date.
The defendant may initiate a lawsuit in response to the pleading (cross action). If the conditions for a cross action are met, the lawsuits will proceed as a joint case (Section 15-1 of the NDA).
Trade mark cases follow the same legal procedures as other cases. The first instance is the Oslo District Court. The district court’s judgment may be appealed to the Court of Appeal and after that, possibly, to the Supreme Court. Only a few selected cases are admitted to the Supreme Court. However, in practice, a relatively high number of trade mark cases have been admitted before the Supreme Court in recent years.
The costs incurred may vary greatly, depending on the scope of the case, its complexity, and the hourly rate of the legal representative. The latter typically varies from EUR200–700, depending on skills and experience.
The parties may choose to be represented by a lawyer, or they can represent themselves. The latter is, however, unusual.
There has been some disagreement and different practices with respect to how, and to what extent, decisions by NIPO should be emphasised by the court. However, the starting point is that the court is not bound by NIPO’s decisions, and the court may fully review the matter in its entirety.
A defendant may file an action for declaratory judgment of non-infringement, substantiating the reasons why an alleged infringement does not exist. Such an action may be filed with no prerequisites or formalities.
The trade mark owner may claim destruction of the infringing goods (see 9.3 Impoundment or Destruction of Infringing Articles) and customs seizures or destruction of counterfeit goods (see 9.7 Customs Seizures of Counterfeits or Criminal Imports).
There are no specific procedures or remedies that apply to counterfeit marks.
Apart from Oslo District Court being the mandatory legal venue, there are no special procedural provisions for trade mark proceedings, and the standard civil procedures apply. The case is determined by legal and, in some cases, also technical judges.
Both the parties and the court may submit proposals for the appointment of technical judges. In the end, the court will appoint the technical judges.
The trade mark owner must prove that the defendant has used:
The defendant may, however, argue in their defence that the use of the sign has only been descriptive (Section 5 of the Norwegian Trade Marks Act). Purely descriptive use rarely constitutes a trade mark infringement.
The assessment of infringement is an assessment of whether there exists a likelihood of confusion between the disputed sign and the trade mark. Likelihood of confusion is a combined effect of similarity between the signs, and similarity between the goods or services. The terms are cumulative, but interdependent in the sense that a lower degree of similarity between the signs may be offset by a higher degree of similarity between the goods.
If the signs are identical, it is not necessary to prove likelihood of confusion to determine infringement. If the older mark is well known, it is sufficient to prove that there is a risk of association.
The likelihood of confusion may relate to the consumer either confusing the marks (direct confusion) or being led to believe that there is a connection between the holders of the two marks (indirect confusion). When assessing the likelihood of confusion, one must assess the mark’s distinctiveness, the degree of descriptiveness and prevalence. According to consistent case law, the decisive factor is the mark’s overall impression, of which the visual and phonetic differences are the most important factors.
The owner of a well-known trade mark may, in addition to claiming infringement, claim dilution by blurring, tarnishment or free-riding.
As the court is not bound by NIPO’s decisions, holding a trade mark registration only gives an assumption of a right, ie, that the mark is valid and not infringing.
The defendant may argue several defences:
Sections 26-5 to 26-8 of the NDA provide mechanisms by which the parties to a civil case can obtain relevant information and evidence from the other party or a third party.
As a starting point, both parties to a case are obliged to make available relevant evidence that the party is in possession of or can obtain. In addition, the parties may request access to evidence that has not already been submitted by the other party. If such a request is not accommodated, the court may order the relevant party or person to comply with the request for access to evidence.
Chapter 28 of the NDA provides mechanisms to secure evidence outside of a trial. Chapter 28 A contains specific remedies for the purpose of obtaining information in intellectual property cases. The court may, at the request of the trade mark holder, order the alleged infringer and related persons to disclose the origin and distribution network of goods or services to which the infringement applies.
The parties may present expert statements or surveys as part of their evidence. Surveys may provide great value as evidence in trade mark cases for certain issues, for example, to determine whether or not a trade mark has been established by use and whether or not the trade mark is well known.
If the defendant has been found guilty of trade mark infringement, they may be sentenced to fines or imprisonment for up to one year, or to imprisonment for up to three years if there are particularly aggravating circumstances (Section 61 of the Norwegian Trade Marks Act). In the assessment of whether aggravating circumstances exist, emphasis will be placed on the damages caused to the owner and the owner’s commercial reputation, the gain obtained by the infringer, and the scope and extent of the infringement in general.
These cases are prosecuted under national criminal law and require the trade mark owner to file a complaint to the prosecuting authority.
The costs of bringing an infringement action to a conclusion in the first instance may vary between EUR10,000 to hundreds of thousands of euros, depending on the scope and complexity of the case.
The trade mark owner may claim a preliminary injunction if the defendant’s conduct makes it necessary to provisionally secure the claim, or if it is necessary to avert considerable loss or inconvenience. To receive a preliminary injunction, the trade mark owner must substantiate their claim and the urgency of the matter.
The judge does not have discretion with regard to ordering remedies, but is bound by the statement of claims.
If the infringement has been committed with intent or through negligence, the trade mark owner is entitled to claim damages or compensation from the infringer. The damages or compensation will be determined based on which of the following alternatives is most favourable to the trade mark owner:
If the infringer has acted in good faith, they will normally have to pay damages equivalent to what would be deemed a reasonable license fee.
The judge does not have discretion with regard to ordering remedies, but is bound by the statement of claims.
Norwegian law provides for a simplified procedure for the destruction of goods in cases of trade mark infringement. Goods that are seized at the border may be destroyed by the customs authorities without a trial if:
The trade mark owner may also claim destruction of infringing goods before the court, as a remedy to prevent further infringement (Section 59 of the Norwegian Trade Marks Act). This apply both to goods that are seized at the border and to goods that are brought into circulation in Norway.
The winning party is at the outset entitled to full compensation for their legal costs from the losing party, provided that the winning party has claimed to be awarded such costs. In theory, there is no limit as to the amount that may be awarded. However, there is a practical limitation in the fact that the party may only be awarded legal costs that are considered reasonable and necessary. What is considered reasonable and necessary depends on the extent, and significance, of the case. For example, a party may not be awarded full remuneration if the legal representative’s hourly rates and the number of hours spent on the case are disproportionate to the significance of the case.
In order to be compensated, the party must have won the case either fully or significantly. If neither of the parties has won the case in full, the judge may decide that both parties must bear their own legal costs.
The court can also exempt the losing party from liability for legal costs in whole or in part if the court finds that compelling grounds justify exemption. In this respect, the court should, in particular, take into account whether:
A trade mark owner cannot obtain damages or other types of relief without starting a procedure that implies notification of the defendant and that allows the defendant to participate in the proceedings and defend themselves.
The prevailing defendant is entitled to full compensation for their legal costs from the plaintiff if:
See 9.4 Attorneys’ Fees and Costs for more information.
The court may decide, as a preliminary injunction, that the customs authorities must withhold goods that are in their possession, if the importation or exportation of the goods will constitute an infringement of intellectual property.
In addition, the trade mark owner may apply for customs to detain goods in their possession, if there is a reasonable suspicion that the import or export of the goods will constitute an infringement of an intellectual property right. This application must include documentation of the intellectual property rights to which the application applies, and information that makes it possible to identify both authentic and counterfeit goods. The applicant must assume responsibility for costs incurred by the customs authorities in connection with the storage, examination and destruction of goods, etc.
Norwegian trade mark law does not differentiate between registered and unregistered marks (marks established by use). The same rights and remedies apply to the trade mark owner.
Conciliation and settlement negotiations are not mandatory, but the parties are strongly encouraged to investigate the possibility of reaching an amicable settlement in the case before going to court. Such negotiations may either take place in private prior to going to court, in the conciliation board or by court mediation.
In addition, the parties may agree to settle the case at any stage in the proceedings, up until the court case is adjourned.
If the parties fail to reach an amicable settlement, arbitration is the most common alternative dispute resolution method for IP matters in Norway. Mediation and conciliation are not common in IP cases, as the parties are usually too far apart and a court decision is required to enforce the parties’ claims.
If an underlying claim, eg, a validity attack, is to be decided by another court, the court of the infringement case may stay the proceedings pending the final decision in that case.
The first instance court’s decisions (tingretten) may be appealed to the regional appeal court (lagmannsretten). The judgment of the regional appeal court may be appealed to the Supreme Court (Høyesterett). A judgment must be appealed no later than one month after the notice of judgment.
As a starting point, the appellate hearing must be set for a time that is no later than six months after the filing of the appeal. However, in practice, this usually takes longer, depending on the court’s current capacity. Pursuant to the NDA, the judgment must be rendered within four weeks after the closing of the main hearing. This deadline may, however, be extended.
There are no special provisions concerning the appellate procedure for trade mark proceedings.
An appeal may be brought against a judgment or an interlocutory order on the grounds of error in the assessment of the facts, error in the application of the law, or error in the procedure upon which the ruling is based. The regional appeal court tries all the appealed parts of the judgment. The court can rely on the description of the facts in the district court’s judgment without reviewing this if the description is not contested.
The Supreme Court may either try the case in full, or decide to admit only parts of the judgment for review.
Under the Norwegian system, intellectual property rights are not mutually exclusive, and a trade mark may be protected by several types of intellectual property rights. For example, a trade mark logo may be protected by both trade mark law and copyright law.
If a trade mark constitutes a surname, no specific or different rule applies. The trade mark is valid, provided it does not cause prejudice to a person who bears the surname in question.
Industrial designs may be registered as a trade mark if they also fulfil the requirements of a trade mark (eg, distinctive character, not exclusively consisting of a shape that results from the nature of the goods themselves, etc). See 4.9 Refusal of Registration.
The registration of anything likely to be perceived as a natural person’s name, stage name or portrait, requires the prior consent of the relevant owner (Section 16 c of the Norwegian Trade Marks Act). Exceptions apply if the name or portrait obviously refers to a person who is long dead.
As the decisive factor is whether the name or portrait is likely to be perceived by the public as referring to a natural person, the main scope of the provision is to protect celebrity names and a person’s right to their own image.
Norwegian trade mark rights are supplemented by provisions in the Marketing Control Act. However, the relationship between the scope of protection under trade mark law, and the scope of protection under marketing law is a highly debated subject under Norwegian law.
In 2021, the Supreme Court ruled that there is a high threshold for supplementing the protection under trade mark law with the protection under marketing law. See the Trends and Developments article on Norway for more information.
In December 2021, the Supreme Court ruled that the Marketing Control Act may only supplement and extend the protection of trade marks, if there are elements in the case that will not otherwise be covered by trade mark law (HR-2021-2480-A). In this case, the owner of the restaurant Stortorvets Gjæstgiveri in Oslo claimed that the restaurant Stortorvet Gjestgiveri Hamar, 130 km outside Oslo, infringed his trade mark rights. However, the owner of the restaurant in Oslo was the owner of a combined mark and did not have rights to the name alone, which was considered descriptive. It was also not regarded as probable that the name was established by use outside of Oslo. Therefore, the court ruled that there was no infringement of trade mark rights, and the use was not in violation of good business practice, in accordance with the Marketing Control Act. See the Trends and Developments article on Norway for more information.
In November 2019, the Supreme Court ruled that a foreign domain name that infringes a Norwegian trade mark right may be transferred to the Norwegian trade mark owner to prevent continued trade mark infringement in Norway (HR-2019-2213-A). The right to transfer in such cases was not restricted by the territorial principle. In this case, the domain name “Appear.in”, the holder of which was a provider of video-conferencing services, was transferred to the Norwegian owner of the trade mark “Appear TV”.
In December 2021, the Norwegian Supreme Court ruled that the use of a competitor’s trade mark as a paid keyword in search engine advertising such as Google Ads, does not infringe trade mark rights (HR-2021-2479-A). This decision ends what has been a long-running debate in Norway. However, the advertisement text must still be designed in a way that does not create a likelihood of confusion, dilution or damage to the brand’s reputation. See the Trends and Developments article on Norway for more information.
Norwegian law does not provide any special rules or norms regarding trade marks used in business.
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The relationship between the provisions of the Trade Marks Act and the Marketing Control Act, more specifically, whether the Marketing Control Act supplements the Trade Marks Act, has been a widely debated topic within Norwegian trade mark law in recent years.
In December 2021, the Supreme Court of Norway issued two decisions addressing this topic. The first case, known as the “Bank Norwegian Case”, related to whether or not it is permissible to use a competitor’s trade mark as a paid keyword in search engine advertising on the internet. The second case, known as the “Stortorvet Gjestgiveri Case”, raised the question of whether the use of a similar sign that was not protected by the Trade Marks Act was in violation of the Marketing Control Act.
Furthermore, in November 2022, a new decision on trademark infringement (the “Kystgjerdet Case”), focusing on the use of a competitor’s trade mark as a paid keyword, was handed down by the Supreme Court. The decision concerns the calculation of damages and compensation awarded in case of such trademark infringements.
The three mentioned decisions provide valuable insight into an important aspect of trade mark law and will likely have a significant impact on how such cases are handled in the future. In addition, the Norwegian legislature (Storting) has passed several amendments to the Norwegian Trade Marks Act and the Norwegian Customs Act that have recently come into force.
The Bank Norwegian Case (HR-2021-2479-A)
Bank Norwegian is a digital bank that offers consumer loans. As part of their marketing strategy, Bank Norwegian pays Google Ads for a prominent place in search results, often at the top, when searching online for other consumer loan banks.
The competing consumer banks filed a lawsuit against Bank Norwegian asking the court to ban the use of their trade marks as paid keywords in Google Ads. The banks claimed that this was a breach of good business practice as set out in the Marketing Control Act Section 25.
The Supreme Court did not agree and concluded that it is not in conflict with the Marketing Control Act to use a competitor’s sign as a paid keyword in search engine advertising on the internet. Actions that in the context of trade mark law are regarded as healthy and fair competition, cannot at the same time be ruled as unfair competition and as contrary to good business practice.
The Supreme Court pointed out that the Court of Justice of the European Union (CJEU) has ruled that the use of a competitor’s sign as a paid keyword does not constitute trade mark infringement as long as the purpose is to offer internet users an alternative to the trade mark owner’s goods or services, and the text in the advertisement does not give the impression that there is a connection between the advertiser and the trade mark owner.
The central question was therefore whether Section 25 of the Marketing Control Act, which sets out that “no act shall be performed in the course of trade which conflicts with good business practice among traders”, provides supplementary protection in this situation. It follows from previous case law that supplementary protection may be relevant if circumstances of a different nature to those captured by the Trade Marks Act come into play. In addition, the consideration of healthy competition must speak in favour of supplementary protection. The Supreme Court stated that supplementary protection cannot be ruled out, but such protection is only relevant “after a concrete assessment and within a relatively narrow framework”.
The Supreme Court came to the conclusion that, in this case, the same considerations formed the basis for the case as those assessed by the CJEU. When the CJEU has concluded that the use of a competitor’s trade mark as a keyword contributes to healthy and loyal competition, this cannot at the same time be considered disloyal and prohibited under the Norwegian Marketing Control Act.
As a result of this judgment, the Norwegian Business and Industry Competition Committee and the courts are expected to adjust their practice accordingly in the future. It remains to be seen whether the Supreme Court’s decision will affect the industry’s perception, and whether businesses will adopt this practice and take advantage of the opportunity to buy competitors’ trade marks as paid keywords. In any case, the requirements for the actual advertisement remain the same. The text in the ad must be written and designed in a way that does not create a likelihood of confusion, dilution or damage to the trade mark’s reputation.
The Stortorvet Gjestgiveri Case (HR-2021-2480-A)
The owner of a restaurant in Oslo with the name “Stortorvets Gjæstgiveri”, which can be translated as “The big square guesthouse”, filed a lawsuit against the owner of a restaurant in Hamar, a city 130 km away from Oslo, with the name “Stortorvet Gjestgiveri Hamar”. The restaurant in Oslo had used the name since the late 1800s and registered the name as a trade mark in 2018, while the restaurant in Hamar started using the name in December 2015. The owner of the restaurant in Oslo claimed that the use of the name “Stortorvet Gjestgiveri Hamar” was a breach of both the Trade Marks Act and the Marketing Control Act.
The Supreme Court concluded that the trade mark “Stortorvet Gjestgiveri Hamar” did not infringe the trade mark rights of “Stortorvets Gjæstgiveri” in Oslo, and that the use was not in violation of good business practice as set out in the Marketing Control Act. The owner of the restaurant in Oslo was the owner of a combined mark, and did not have rights to the name alone, which was considered descriptive. Furthermore, it was not regarded as probable that the name “Stortorvets Gjæstgiveri” was established by use outside of Oslo.
In the decision, the Supreme Court made statements regarding the following matters.
The possibility to register trade marks of a descriptive nature
The Supreme Court concluded that the mark “Stortorvets Gjæstgiveri” could not be registered as a trade mark (see Section 14 of the Trade Marks Act), because it is descriptive and without distinctive character. The name and the visual design did not give the mark sufficient distinctiveness.
The conditions for a trade mark to be established by use
The decision also contains statements regarding what conditions must be met for a mark to be considered established by use, without registration in accordance with the Trade Marks Act. In this case, “Stortorvets Gjæstgiveri” was not established as a trade mark by use in the relevant circle of trade in the area of Hamar.
The relationship between the Trade Marks Act and the possibility for supplementary protection under the Marketing Control Act
The Supreme Court referred to the new Bank Norwegian case (HR-2021-2479-A) mentioned above, where the Supreme Court stated that supplementary protection under the Marketing Control Act is primarily relevant “where there are elements in the case that will otherwise not be covered, typically, conditions of a different nature than those governed by special provision”. Supplementary protection under the Marketing Control Act Section 30 on copying the products of another person and Section 25 on good business practice were not relevant in this case.
The Kystgjerdet Case (HR-2022-2222)
In 2018, outdoor fence providers Vindex and Norgesgjerde were made aware that their competitor Kystgjerdet was using their company names “NORGESGJERDE” and “VINDEX” in its advertising, both in the content of a specific advertisement and as a paid keyword visible in the Google search field. Vindex and Norgesgjerde filed a lawsuit against Kystgjerdet and both the district court and the appellate court found that Kystgjerdet’s use of the words constituted a trademark infringement. The case before the Supreme Court only deals with the assessment of damages and compensation for the constituted trademark infringement.
Initially, Vindex and Norgesgjerde sought total damages and compensation of around NOK10 million, primarily based on their calculations of hypothetical past and future losses resulting from Kystgjerdet’s online ads. However, the Supreme Court awarded Vindex and Norgesgjerde compensation amounting to NOK800,000 each.
The Supreme Court ruled that Vindex and Norgesgjerde failed to demonstrate a causal relationship between their decrease in revenue and Kystgjerdet’s disputed ads, and failed to establish the financial benefit that Kystgjerdet had derived from the disputed ads. Thus, the appropriate legal basis for measuring compensation, in this case, was a “reasonable license fee” in accordance with the Trade Mark Act Sections 58 (1)(a) and 58 (2). Since the documentation provided by Norgesgjerde and Vindex did not provide enough information to accurately determine the number of customers won over by the disputed ads, the Supreme Court ultimately decided on a discretionary award of a reasonable license fee.
Amendments to the Norwegian Trade Marks Act and the Norwegian Customs Act
The Norwegian legislature (Storting) passed several amendments to the Norwegian Trade Marks Act and the Norwegian Customs Act in 2020, which have all since come into effect. The primary objective of these amendments was to implement EU Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015, also known as “the New Trade Mark Directive”, which replaces Directive 2008/95/EC. The amendments provide stronger protection for trade mark holders and help prevent infringement of trade marks in Norway.
The four most important amendments are summarised below.
No requirement for a trade mark to be represented graphically
Pursuant to Section 14 of the Trade Marks Act, it previously had to be possible to represent a trade mark graphically in order for it to be registered in the Norwegian Trade Mark Register. Since the new amendment came into force, the only requirement is that the trade mark is represented in a clear and precise manner that enables the scope of protection to be clearly determined.
New grounds for refusal of a trade mark registration
The amendment provides new absolute grounds for refusal of a trade mark registration. This follows from the new provision that an application for trade mark registration will be refused or declared invalid if it was filed in bad faith, or by an agent or representative of the trade mark owner without the trade mark holder’s consent. The term “bad faith” corresponds to the expression “contrary to good business practice” as set out in Section 25 of the Norwegian Marketing Control Act.
The use of trade marks as security
Previously, Norwegian legislation allowed patents and plant variety rights, but no other intellectual property rights, to be given as security. However, the amendment to the Trade Marks Act now allows for security in trade marks’ rights as well.
The right to take action against counterfeit goods in transit
Over the last couple of years, there has been an increase in the distribution of counterfeit goods. The amendments to the Norwegian Customs Act make it easier for a trade mark owner to prevent the importation of such goods.
Following the recent amendments, trade mark owners may apply directly to Norwegian Customs for assistance with detaining and destroying goods infringing intellectual property rights. Previously, the trade mark owner had to seek a preliminary injunction for such assistance. Thus, this amendment simplifies the procedure for the destruction of goods.
Furthermore, the former provisions required Norwegian Customs to obtain the importer’s written consent for the destruction of counterfeit goods. Following the new amendments, this requirement has been removed. Instead, the destruction may take place if the importer does not object within a deadline of ten business days.
Statistics from the Norwegian Industrial Property Office (NIPO) for 2022
According to statistics from NIPO, 2021 saw a record number of trade mark applications being filed, with a total of 18,142 applications. However, in 2022, there was a slight decrease in the number of applications, totalling 17,640 applications. Of these, 14,538 were submitted by foreign applicants and only 3,102 by Norwegian residents.
As of 18 January 2023, 243,386 trade marks are in force in Norway and 12,600 trade mark applications are still pending.
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