Mar 23, 2023 (Newsletter Issue 4/23)
Withdrawal of Notification on Division of International Registrations
As of 1 March 2023, the Office of Norway has withdrawn the notification made under Rule 40(6) of the Regulations of the Madrid Protocol Concerning the International Registration of Marks.
Consequently, as from that date, the Office of Norway may present to WIPO requests for the division of an international registration under Rule 27bis(1) of the Regulations and requests for the merger of international registrations resulting from division under Rule 27ter(2)(a) of the Regulations.
Source: www.wipo.int
Mar 01, 2023Changes in Regulations for TrademarksFrom 1 March 2023, amendments to the Trademarks Act and the Fee Regulations came into force. The changes are based on the EU's trademark directive, 2015/2436. Norway acceded to the Singapore Treaty at the same time.
- Changes in the regulations on fees - from three classes to one
- Easier registration of non-traditional trademarks
- TMs applied for in black & white or shades of grey no longer receive protection for all colours
- Changes in rules on the renewal of trademarks
For more information click here.Source: www.patentstyret.no Jan 14, 2021 (Newsletter Issue 1/21)IP Office Provides Madrid e-FilingStarting December 1, 2020, the Norwegian Industrial Property Office (Patentstyret) has given access to the Madrid e-Filing service to trademark applicants via its website. Brand owners will have the possibility to file international applications online.
More information on the notice, please click here
Source: www.wipo.int Jun 11, 2020 (Newsletter Issue 9/20)NIPO as Depositing and Accessing Office of Exchange of Priority DocumentsThe Norwegian Industrial Property Office (NIPO) notified the International Bureau in accordance with paragraphs 10 and 12 of the Framework Provisions that it would commence operation as both a depositing office and an accessing office with effect from January 1, 2020.
- NIPO as a depositing Office will deposit certified copies of Patent, Trademark and National Industrial Design applications and PCT international applications filed with the office on and after January 1, 2018, where applicant specifically requests services to be available;
- NIPO as an accessing Office will recognize priority documents available to it through the service for the purposes of any application for which the time for furnishing the priority document has not expired by January 1, 2019.
- As an Accessing Office, the Office will accept color, greyscale black and white documents in PDF format as deposited by depositing Office.
- For patent applications, all documents and information will be exchanged in black and white and in PDF format through the WIPO DAS Office web portal and based on WIPO PCT-EDI;
For more information, please click hereSource: www.wipo.int May 28, 2020 (Newsletter Issue 8/20)Proposed Changes to Trademark LawThe Ministry of Justice and Public Security (the “Ministry”) has issued a proposition to the Norwegian Parliament (Prop. 43 LS (2019-2020) for amendments to the Norwegian Trademark Act, the Norwegian Customs Act, the Norwegian Mortgage Act and legislation on other forms of intellectual property. The proposed amendments aim to harmonise Norwegian legislation with the Directive (EU) 2015/2436 (the “Trademark Directive”), which was incorporated into the EEA Agreement on 7 February 2020.
Some of the key proposed amendments are the following:
- Elimination of the graphical representation requirement, where after the requirement is that the trademark must be reproducible in the trademark register in a clear and unambiguous manner.
- The non-exhaustive list of signs that can constitute a trademark is extended to include further examples, such as colours and sounds.
- The list of absolute grounds for refusal in Section 2, second paragraph, is proposed to be expanded. Signs that consist exclusively of a shape or another characteristic which either results from the nature of the goods themselves, is necessary to obtain a technical result or which gives a substantial value to the goods, may not obtain protection as a trademark, if the proposed amendment is implemented.
- Introduction as a new absolute ground for refusal or invalidity in Section 15 that the trademark application is submitted in bad faith.
- The relevant point in time for assessment of distinctiveness is shifted. Consequently, signs that only acquire distinctiveness through use after the application date but before the Registration date shall no longer be refused.
- Non-use as a defence in opposition and infringement proceedings: Pursuant to the suggested provision, the proprietor of an earlier trademark must upon request from the applicant of the later trademark, prove that the earlier trademark has been put to genuine use in the preceding five-year period. The same applies in relation to claims for injunction against infringers, cf. the proposed Section 57 second paragraph.
- Security in trademark rights: The amendment makes it possible to separate security rights in trademarks from the rest of the business assets, compared to a fee covering the entire business assets of the company.
For more information, please click hereSource: www.bahr.no Mar 05, 2020 (Newsletter Issue 3/20)Notice to WIPO of Depositing and Accessing OfficeThe Norwegian Industrial Property Office (NIPO) notified the International Bureau in accordance with paragraphs 10 and 12 of the Framework Provisions that it would commence operation as both a depositing office and an accessing office with effect from January 1, 2020.
- NIPO as a depositing Office will deposit certified copies of Patent, Trademark and National Industrial Design applications and PCT international applications filed with the office on and after 01.01.2018, where applicant specifically requests services to be available;
- NIPO as an accessing Office will recognize priority documents available to it through the service for the purposes of any application for which the time for furnishing the priority document has not expired by January 1, 2019.
- As an Accessing Office, the Office will accept color, greyscale black and white documents in PDF format as deposited by depositing Office.
- For patent applications, all documents and information will be exchanged in black and white and in PDF format through the WIPO DAS Office web portal and based on WIPO PCT-EDI.
For more information, please click hereSource: www.wipo.int Apr 04, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationThe Office of Norway has notified WIPO in accordance with new Rule 40(6) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations are not compatible with the laws of Norway and do not apply in respect of the Contracting Party. As a result, Norway will not present to the International Bureau of WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Jul 01, 2011 (Newsletter Issue 9/11)Trademark Duration AmendedThe current Norwegian Trademarks Act, which entered into force on July 1st, 2010, amended the duration of trademarks. The trademark duration is 10 years from application date for applications filed on/after July 1st, 2010 and 10 years from registration date for applications filed before July 1st, 2010.
Source: HÅMSØ PATENTBYRÅ ANS, Sandnes, Norwegen Jan 01, 2011 (Newsletter Issue 1/11)Official Fees ChangedThe Norwegian Ministry of Trade and Industry has passed a new Regulations on Fees for the Norwegian Industrial Property Office (NIPO). The Regulations entered into force on January 1st, 2011.
Source: Hamsö Patentbyra, Norway and www.patentstyret.no Jul 01, 2010 (Newsletter Issue 12/10)
Opposition Period Changed
The Norwegian Parliament has approved a new Trademark Act, which extends the opposition period from 2 to 3 months from publication date, effective July 1st, 2010.
Other important changes concern the access to administrative review of the Norwegian Patent Office. For example cancellation of trademarks can be reviewed by the PTO instead of having to proceed with a regular law suit.
Source: www.patentstyret.no
The primary legal basis of Norwegian trademark law is the Norwegian Trademark Act, No. 8 of March 26, 2010. The act entered into force on July 1, 2010.
Norway is a "first-to-file" country, and trademark protection is primarily obtained through registration.
However, protection can also be acquired through extensive use, once the mark becomes "well known" within the relevant trade circle. Protection for unregistered marks remains for as long as the mark remains "well known". Norway is a member of the Madrid Protocol.
Nice classification, 11th Edition, 2021 version
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, colours or colour combinations, three-dimensional forms, the three-dimensional form of a good or its packaging as well as sound marks, holograms, moving images and any combination of the mentioned signs. Olfactory marks, taste marks and feel marks are theoretically registrable, but no such marks have yet been registered.
The following trademark types are registrable: trademarks, service marks, collective marks.
The application is filed with the Norwegian Industrial Property Office (NIPO).
Multiple-class applications are allowed.
Local counsel/representative is not formally required, but a trademark application, including the identification of goods/services, must be filed in Norwegian. Other documents can be in Norwegian, Danish, Swedish or English, but the NIPO will issue office actions, etc. in Norwegian.
A power of attorney is required, if the applicant is reprented by a counsel.
Foreign applicants need a domestic registration for their mark unless
- The applicant is domiciled in a Paris Convention member state
- The applicant is domiciled in a WTO Agreement member state
- The applicant is domiciled in a country which does not require for Norwegian applicants to submit proof of domestic registrations in support of trademark filings in that country.
The NIPO may, theoretically, request evidence of domestic registration in such instances, but does not perform ex officio examination in regard to such filing basis.
The application process includes a formal examination on absolute and relative grounds, i.e. a formalities check and an examination of distinctiveness and conflicting rights in the form of registered trademarks. An application can also be refused on the basis that it is deceptive, or that it includes a protected name.
The processing time from first filing to registration or first office action is normally between 3 and 6 months. Notably, however, there exists a fast-track option that brings the processing time down to approximately two weeks, but this requires use of pre-approved designations of goods.
After registration, the trademark is published in the weekly trademark journal “Norsk Varemerketidende”.
National:The opposition period is 3 months from publication of registration.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
Trademark duration is 10 years from application date for applications filed on or after July 1, 2010 and 10 years from registration date for applications filed before July 1, 2010. The registration is renewable for periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark application is NOK 2,900 for up to three classes and NOK 750 for each class in excess of three classes. Registration/publication does not incur any official fees.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
If you like to purchase all available information for this country, click the order button.
The total price is
49.00 EUR. A PDF-Download will be sent to you electronically.
Further practical details are available in our publication on this topic
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Mar 18, 2021
Bryn Aarflot AS, Oslo, Norway