Questions and Answers regarding trademarks in Norway

Q: What is a trademark?

A: A trademark is any word, phrase, sign, or symbol capable of identifying and distinguishing the commercial origin of goods or services from one party from those of others.

Q: How do I get protection for a trademark in Norway?

A: Protection for a trademark in Norway may be established through use and granted through registration. Trademark through establishment by use requires that the mark has become well-known as someone's special characteristic. Trademark through registration means that the Norwegian Industrial Property Office (NIPO) grants you the exclusive right to a trademark through an application procedure.

Q: What is the difference between a trademark, a copyright and a patent?

A: Trademarks, copyrights, and patents are all forms of intellectual property protection that safeguard different types of assets, each serving distinct purposes and scopes. Trademarks protect symbols, words, phrases, logos, or designs that identify and distinguish the source of goods or services. They primarily aim to prevent consumer confusion and protect brand identity. Copyrights protect original works of authorship, including literary, musical, and artistic creations. Copyright grants creators’ exclusive rights to use and reproduce their works, preventing unauthorized use. Patents protect inventions or processes that provide a new technical solution. They grant inventors exclusive rights to make and sell their inventions for a limited period, encouraging innovation.

Q: What does the ™ and ® symbol mean?

A: These symbols are widely used in marketing products and services to signify ownership and create distance from competitors. The ® symbol indicates that a trademark has been registered by Norwegian Industrial Property Office (NIPO) and using this symbol without proper registration may violate the Marketing Act. The TM symbol stands for "Trade Mark" and can be used even if the mark is unregistered, as it signals that the mark is intended as a trademark, though it does not provide legal protection.

Q: What can be trademarked in Norway?

A: A trademark can consist of words, names, logos, shapes, images, letters, numbers, packaging, sound or combinations of these. The Norwegian Trademark Act generally imposes no restrictions on the types of signs that can be registered as trademarks. The deciding factor is whether the sign is capable of distinguishing a business's goods or services from those of others. In simple terms, this means that the sign must be distinctive and not descriptive. Some types of signs and marks may however be more difficult to register, often because consumers are less used to perceiving these as the special characteristics of a single business.

Q: Can I trademark a common word, a phrase or a slogan?

A: In principle, yes. Slogans, expressions, and sayings can be registered as trademarks, provided they are distinctive and not descriptive. Each slogan must be evaluated in relation to the goods and services specified in the application, and it must differentiate your offerings from those of others. As such, purely promotional terms are typically not accepted as trademarks, as well as slogans that merely describe goods and services or make claims about their quality. A slogan is generally registrable if it includes at least one distinctive element that the average consumer can recognize and associate with the brand. Additionally, slogans that feature imaginative or catchy elements, such as puns, rhythm, or irony, are often more likely to be eligible for registration.

Q: Can I trademark something that is already trademarked?

A: In general, you cannot trademark something that is already registered by another party. If the existing trademark is similar to your proposed mark and is associated with similar goods or services, your application is likely to be rejected due to the risk of consumer confusion. Trademarks are categorized into different classes based on the type of goods or services they represent, and if the existing trademark belongs to a completely different class, you may be able to register a similar mark. However, this can still lead to legal disputes. Additionally, if you have been using the trademark in commerce prior to the registration of the existing mark, you might have some rights under common law, depending on the jurisdiction, but this does not guarantee trademark protection. Another option is to request the cancellation of the other registered trademark so that you can register your own mark. However, this is typically relevant only in a few situations, particularly when the existing trademark has not been used in actual commerce for the past five years.

Q: What is classification of goods and services?

A: When applying for trademark registration, you must specify the goods and services for which you intend to use the trademark. This process is known as classification of goods and services, as it involves associating your products with specific product classes. Once the trademark is registered, your exclusive rights to use it will apply for the goods and services you have selected. This means that others are free to use your trademark for other goods and services, as long as it concerns a different business sector where there is no risk of confusion.

Q: What goods and services may be designated in Norway?

A: The Norwegian Industrial Property Office uses the international classification system called Nice. The Nice system organize all goods and services in 45 different classes. Goods and products are categorized from class 1 to class 34 based on their function, purpose, and material, with accessories typically placed in the same class as the main item. Services are classified from class 35 to class 45 according to their respective industries or business areas. A product may be included in multiple classes if it serves different purposes, is made from various materials, or exists in both processed and unprocessed forms.

Q: Why should I register a trademark?

A: Registering a trademark offers several significant benefits that enhance your brand's protection and value. It provides legal ownership and exclusive rights to use the mark, which also helps protecting your brand against unauthorized use. A registered trademark increases brand recognition and credibility, making it easier for consumers to identify and trust your products or services. Trademarks can also become valuable assets over time, as they can be sold, licensed, or used as collateral. Moreover, if you plan to expand internationally, a registered trademark simplifies the process of securing protection in other countries. Overall, registering a trademark is a proactive step to protect your brand and maximize its long-term value.

Q: How do I file a trademark in Norway?

A: An application for trademark registration in Norway is done by submitting an application form to the Norwegian Industrial Property Office. Before doing so, you must ensure that your desired mark is not already registered, as well as determine the appropriate classes for goods or services. The application may be filed online via the Norwegian Industrial Property Office (NIPO) website, or through a paper application sent by mail.

Q: What is required to file a trademark application in Norway?

A: To file a trademark, you will have to provide the name and address of the applicant, a clear and distinct representation of the desired mark (word, logo, etc), and a list of the goods or services for which the trademark is sought to be registered. Additionally, there are some requirements for collective marks and guarantee or certification marks. For such marks, the applicant must outline who has the right to use the mark, the conditions for membership in the association, and the terms for using the collective mark, including any applicable sanctions. Furthermore, you must specify the holder's obligations to enforce liability against those who misuse the mark, as well as the holder's rights and obligations toward users, including the right to oversee usage, potentially through designated control bodies. Regardless of the kind of mark you are seeking protection for, payment of the official fees is an absolute requirement. If such payment is not made, the application will be dismissed. This fee is currently (October 2024) 3 800 NOK for one class, and 1 000 NOK for each additional class.

Q: Can I file a trademark application in Norway even though I am not currently selling any products?

A: Yes, you can file a trademark application even if you are not currently selling any products. It is in most cases recommended to apply for trademark registration before starting to produce, import, and sell goods. Ensuring that you have the necessary rights in place can be crucial for offering the goods and services the trademark will be used for. Therefore, there are no requirement to provide proof of use when applying for trademark registration in Norway, and such documentation is generally not necessary for the first five years after registration. When drafting the list of goods and services for the trademark, it is wise to anticipate which products and services may become relevant within the first five years. After this period, there is a risk that third parties may request the cancellation of the trademark for goods and services it has not been used for.

Q: Can I make changes to the trademark or to the goods and services after the application is submitted?

A: The access to make changes to a Norwegian trademark application after submission to the Norwegian Industrial Property Office are very limited. Alterations to the trademark itself can only be made if the changes are insignificant and do not affect the overall impression of the mark. The specification of goods and services cannot be expanded or adjusted but can only be restricted. This means that neither additional classes nor further specifications within a class can be added. It is therefore incredibly important to take sufficient time when drafting the list of goods and services before submitting the trademark application. It is always recommended to go a bit broader rather than too narrow in your specification of goods and services.

Examination:

Q: How long does the examination process last in Norway?

A: After submitting your application to the Norwegian Industrial Property Office (NIPO), it will be published in the trademark register within 0-3 days. You can expect a response within 3 weeks if you pay upon submission and use pre-approved terms. Processing times for special marks such as sound, motion, multimedia, and hologram may be longer. If you do not pay or use pre-approved terms, a response may take up to 4 months. If you receive a letter from NIPO, respond by the deadline to avoid dismissal of your application. After your response, NIPO will reassess your application and may either register the trademark or issue another refusal. If your application was submitted with pre-approved terms and payment, you can expect a new assessment within 3 weeks after submitting your arguments. If it was not pre-paid or did not use pre-approved terms, expect a response within 7 months. If you disagree with NIPO's assessment and send further arguments, the case will be reviewed again. If the trademark still does not meet the criteria, you will receive another letter with an opportunity to respond before a final decision is made. If all is in order, your trademark will be registered and announced in the Norwegian Trademark Gazette. Depending on your actions and the examination proceedings, a trademark registration may take between 3 weeks and 1 year.

Q: Is it possible to request accelerated examination of a trademark application in Norway?

A: Yes, when applying for a trademark application in Norway it is possible to request that the examination process is accelerated.

Q: What are common reasons for refusal?

A: There are numerous general, absolute, and relative grounds for refusal of trademark registration in Norway, but some of these are more common than others. The most common reason for refusal is that the desired trademark lacks distinctiveness, is descriptive for the goods and/or services designated for or are confusingly similar with existing and prior trademarks. It is also not uncommon that there are flaws with the trademark application itself. It is not uncommon that the trademark will be accepted for certain goods and services but denied for other goods and services. The most regular reason for this, is that there is another similar trademark registered for some of the classes you have designated, or that the trademark is seen as descriptive for some of the goods and/or services. When receiving a refusal from the Norwegian Industrial Property Office, the officer will provide you with information on why your application has been partially or completely denied, as well as the options available to you.

Q: How is distinctiveness accessed in Norway?

A: The key aspect of assessing distinctiveness is whether the trademark is clear and distinctive enough to register in the average consumer's mind, enabling them to identify the origin of the goods or services and differentiate them from those of other businesses. A comprehensive evaluation considers both distinctive and non-distinctive elements of the trademark, with the threshold for distinctiveness set relatively low. The requirement for distinctiveness also addresses the need to keep common terms available for other businesses in their marketing efforts. This concern primarily applies to words rather than graphical elements, as the prohibition against registering descriptive trademarks serves a public interest goal, ensuring that descriptive signs or terms related to categories of goods or services can be freely used by all. Importantly, there is no requirement for the trademark to meet a certain level of quality or creativity, as long as it allows consumers to identify the origin of the goods or services. Owners of weaker marks must accept that competitors may have closer associations with their offerings than owners of stronger marks.

Q: What is likelihood of confusion?

A: Likelihood of confusion is the legal standard used to determine whether consumers may be misled or confused about the source of goods or services due to the similarity between two trademarks and the designated classification. This concept is essential in trademark law, influencing both the registration of new trademarks and the assessment of potential infringement on existing trademarks. When trademarks are similar, consumers might mistakenly believe that the products or services come from the same source, which can erode brand identity and consumer trust.

Q: How is the similarity between trademarks judged in Norway?

A: Likelihood of confusion arises from the combined effects of similarity between trademarks and the similarity of the goods or services they represent. These two aspects must be evaluated together rather than in isolation. The assessment of goods or service similarity depends on the specific characteristics of the trademarks involved and their degree of similarity. Likewise, trademark similarity should always be considered in relation to the goods or services. A minimum level of both trademark and goods/service similarity is necessary for a legally relevant risk of confusion to exist. However, if one factor is weak, a strong similarity in the other factor can compensate for it. Other important considerations for assessing the risk of confusion include the degree of distinctiveness of the trademarks and the extent of their market presence. Ultimately, the likelihood of confusion pertains to the general market context and whether the relevant consumer group might mistakenly believe that the goods originate from the same source or share a commercial relationship.

Q: How do I respond to a rejection based on similarity to another registered trademark?

A: If the application is rejected based on similarity to a prior registered trademark, there might be multiple ways to respond in order to get the trademark registered. The alternatives most likely to lead to registration will depend on the specific circumstances of the case. For instance, if the prior trademark has not been used for the relevant goods and services over the last 5 years, you can request the revocation of this trademark. If the trademark does get revoked, the trademark will no longer prevent the registration of your mark. Alternatively, you can contact the owner of the prior trademark and ask for a consent from them. Such approach is often preferred if the owner has registrations in other parts of the world where you might want to register your trademark later on. If the trademark is being used by the other owner, or the trademark has not been registered for 5 years, such consent will often not be given easily. Since the owner has the legal right on their side and you are often a direct or closely related competitor, you will typically need to make sacrifices to obtain consent. This often means agreeing to limit the list of goods and services or even completely removing certain classes. In all cases, you can respond to the Norwegian Industrial Property Office (NIPO) and attempt to argue that there is no likelihood of confusion between your trademark and the prior trademark. In some cases, where the application is just partly denied, you can also accept the adjustments to the trademark application proposed by the NIPO-officer.

Q: How do I respond to a rejection based on lack of distinctiveness?

A: If you want to register a trademark that the Norwegian Industrial Property Office (NIPO) has deemed as non-distinctive, the only option is to reply to NIPO and argue that the trademark does indeed have sufficient degree of distinctiveness. You will need to submit relevant legal arguments or precedents to strengthen your position, supported by relevant evidence that demonstrates your trademark’s distinctiveness, such as examples of its use in commerce, marketing materials, and consumer testimonials indicating recognition.

Q: How do I respond to a final decision of rejection by the Norwegian Industrial Property Office?

A: If the Norwegian Industrial Property Office (NIPO) in their final decision has rejected the registration of your trademark, your option is to appeal the decision. To appeal a rejection from NIPO, you must submit a written appeal to NIPO, which will forward it to the Appeals Board (KFIR). Appeals are typically considered only once, based on the initial submission. The appeal must be filed within two months of the decision date, as specified in NIPO's notice, and this deadline cannot be extended. The appeal may be submitted in Norwegian, Danish, or Swedish. NIPO will issue an invoice for the appeal fee, and after payment, it will evaluate whether to overturn the original decision. The Appeals Board will review the case, appoint members, and conduct a conflict-of-interest check before making a decision. The board’s ruling will then be sent to NIPO, which will update its records accordingly. If you are dissatisfied with the Appeals Board's decision, you can take the matter to court. The court has the authority to fully review KFIR's legal discretion and determine its compliance with the Trademark Act and relevant case law. However, the court can only uphold or annul KFIR's decision. It cannot order the registration of a trademark. The deadline for filing an appeal with the Oslo District Court is absolute with no extensions permitted.

Q: Are there limits to the rights of a trademark registration?

A: Yes, there are some limits to the rights of a trademark registration. A fundamental limitation is that your trademark rights do not prevent others from using the trademark privately, as trademark rights only protect against use in a commercial context. Another limitation is that the trademark rights obtained through registration does not cover any part of a trademark that cannot be registered separately. Furthermore, your right cannot be used to prevent someone from using (i) their name or address, (ii) signs or indications that lack distinctiveness, or descriptions related to the nature, quality, quantity, purpose, value, geographical origin, time of production, or other characteristics of the goods or services, or (iii) a trademark to identify or refer to goods or services belonging to the trademark owner, especially when such use is necessary to indicate the intended purpose of a product or service, like when the mark signifies that the product is meant to be used as an accessory or spare part. However, this limitation to your trademark rights applies only insofar as the use aligns with good business practices.

Q: What happens if someone uses my trademark?

A: Trademark infringement occurs only when a similar or identical mark is used in a commercial context, such as the sale or promotion of goods or services that overlap with the protected trademark. If the infringer is using the mark in a non-commercial or personal context, it is unlikely to cause confusion among consumers and may not violate trademark rights. If you identify unauthorized use of a similar mark in a commercial setting, start by documenting he unauthorized use and gather evidence showing how your trademark is being infringed. Then, send a cease-and-desist letter that outlines your ownership and requests the infringer to stop using your trademark by a specific date. If the infringer ignores your request, you may consider legal action, which can include seeking a court injunction to halt their use and requesting damages for your losses. If your trademark is well-known, you can also pursue a dilution claim, asserting that their use harms your brand's reputation. Regularly monitor the market for unauthorized uses and consult a trademark attorney to understand your rights and develop an effective protection strategy. They can assist with legal processes and explore settlement options, like licensing agreements, to resolve issues amicably.

Q: Can I give away or sell my trademark?

A: Yes, there are several ways as a trademark owner to transfer rights to the trademark to others. As a trademark owner you may transfer your trademark through a process known as "trademark assignment," or you can license it, allowing others to use it without transferring ownership. For assignment, it's essential to have a written agreement that specifies the terms of the transfer, including the trademark involved and any associated goodwill. If the trademark is registered, you must notify the relevant trademark office about the change in ownership. Trademark licensing involves creating an agreement where the trademark owner (licensor) permits another party (licensee) to use the trademark for specific goods or services. This agreement should outline the scope of use, duration, geographic territory, and any quality control measures required by the licensor. Licensees may also need to pay royalties for the right to use the trademark. Maintaining quality control is vital for protecting the trademark's reputation and ensuring it remains a strong brand. Whether you choose assignment or licensing, both strategies can effectively expand the reach of your brand while allowing you to retain control over its use. Documenting the agreement and consulting with a trademark attorney will help ensure that your rights are protected and that you comply with all legal requirements.

Q: Do I have to use my trademark in order to maintain the trademark registration in Norway?

A: No, under Norwegian law, there is no requirement that the trademark must actually be used to maintain the trademark registration. This means that, in principle, one can hold a trademark registration indefinitely, provided that the registration is renewed, even if the trademark is not actually used in commercial context. However, if the trademark is not being used, third parties may eventually be able to request its cancellation.

Q: How long does a trademark last in Norway?

A: In Norway, a trademark registration lasts for 10 years from the date of application. However, it can be renewed indefinitely for additional 10-year periods, as long as the renewal fees are paid. It's important to renew the trademark before the expiration date to maintain protection.

Q: How do I renew my trademark in Norway?

A: To renew your trademark in Norway, you will need to initiate the renewal process before the expiration date. If you have a registered trademark in Norway, the Norwegian Industrial Property Office (NIPO) will send you a notification 6 months before the renewal date. Requestion a renewal is fairly easy, and you will only need to fill out the appropriate renewal application form, which can typically be found on NIPOs website. Along with the application, you must pay the required renewal fee, which may vary depending on the number of classes your trademark is registered under. After completing these steps, submit your application and payment confirmation to NIPO, which can often be done online. Once your application is processed, you will receive confirmation of your trademark renewal. It’s important to keep documentation of this renewal for your records. For the most accurate and up-to-date procedures, it’s advisable to check NIPOs website or consult a trademark attorney. This ensures that you comply with all necessary requirements and maintain protection for your trademark.

Q: How much does it cost to renew a trademark in Norway?

A: The cost to renew a trademark in Norway varies depending on the number of classes the trademark is registered under. The basic official fee covers the renewal fee for one class. In addition to this basic fee, there is an additional fee for each class beyond the first. An additional fee is also added if the renewal request is submitted after the registration period has expired. As of October 2024, the basic fee for one class is NOK 3400, with an extra NOK 1300 for each more class. In the renewal request is submitted too late, the extra fee is NOK 550. These prices may change but the correct cost will always be specified in the notification sent out be the Norwegian Industrial Property Office 6 months before the expiration date.

Q: When must I renew my trademark in Norway?

A: You must renew your trademark in Norway before the expiration date of your current registration, which is usually 10 years from the date of application. The request for renewal can be submitted no earlier than six months before the expiration date but will take effect from the expiration date, regardless of whether the request was submitted before or after this date. Therefore, the renewal will last for an additional 10 years from the expiration date, even if the request was submitted 6 months prior to the deadline. Our advice is always to start the renewal process at least a few months in advance to ensure you have ample time to complete all necessary steps and address any potential issues. If you miss the renewal deadline, you may still be able to renew your trademark within a grace period, but this may involve additional fees. Regularly monitoring your trademark's status and staying aware of the renewal timeline is crucial to maintaining your trademark rights.

Q: Do I need to provide proof of use when renewing a trademark in Norway?

A: No, in contrast to other jurisdictions such as USA, you do not need to provide proof of use when renewing a trademark in Norway. The Norwegian legal system does not require actual use of the trademark for the renewal process, meaning you can maintain your trademark registration indefinitely, as long as you pay the renewal fees. However, if the trademark is not used, third parties may eventually request its cancellation on the grounds of non-use.

Q: What happens if a trademark renewal is submitted late?

A: If a trademark renewal is submitted late in Norway, you may still have the opportunity to renew your trademark within a grace period. In Norway, the grace period for late trademark renewal is six months from the expiration date of the trademark registration. If you fail to renew within this six-month period, your trademark registration will be cancelled, and you will lose your exclusive rights to the trademark.

Q: Can I lose my registered trademark?

A: Yes, there are multiple ways you can lose a trademark registration. A trademark must be renewed every 10 years. If a request for renewal is not submitted with payment of the fees, the registration will be cancelled. The registration may also be revoked if you fail to use the trademark in commercial context over a period of 5 years. The use must be genuine; however, the threshold is generally not very high. Revocation based on non-use requires that such action is demanded by a third party. In rare cases, a trademark can be lost due to degeneration. This occurs when a trademark becomes synonymous with a type of product instead of identifying a specific source. This happens when consumers use the trademarked name to refer to a general category of goods, causing it to lose its distinctiveness. Examples include "thermos" and "aspirin," which started as brand names but became generic terms. Once a trademark is deemed generic, the owner can no longer enforce their rights, resulting in the loss of protection. In the same way as for non-use, this requires that a third party claims revocation of the registration.

Q: Can an expired registration be revived?

A: In principle, no. If a registered trademark is revoked, deleted or cancelled, you will not be able to revive the same registration. The only exception is when a trademark registration has expired, but you submit a request of renewal within the grace period of 6 months from the expiration date. In these cases, you will be able to “revive” the trademark registration provided the official feed are paid. In all other cases, you will have to file a new application for the same trademark registration in order to enjoy protection. If the trademark has been used to such an extent that it is considered established and well-known, the trademark will still enjoy protection based on this use, even if the registration itself has been cancelled.

Q: What is an opposition to a trademark registration?

A: An opposition to a trademark registration is a formal process where a third party challenges the registration of a trademark. This typically occurs within a specific time period after the trademark has been published for opposition, allowing individuals or businesses to argue that it should not be registered. Common grounds for opposition include claims that the new trademark violates established rights, often because it is too similar to an existing one and could cause consumer confusion. If successful, the opposition can prevent the trademark from being registered.

Q: When can someone file an opposition in Norway?

A: In Norway, an opposition to a trademark registration can be filed within three months from the date the trademark is published in the Norwegian Trademark Gazette. This period allows third parties to formally challenge the registration if they believe the trademark infringes on their existing rights or creates a likelihood of confusion.

Q: On what grounds can someone submit an opposition against a trademark registration?

A: An opposition against a trademark registration can be submitted on several grounds. One common reason is the likelihood of confusion, where the new trademark is too similar to an existing registered trademark, potentially causing confusion among consumers regarding the source of the goods or services. Additionally, the opposing party may claim prior rights to the trademark, either through registration or use, which could be adversely affected by the new registration. Other grounds for opposition include descriptiveness, where the trademark is deemed too descriptive of the goods or services it represents, making it unsuitable for registration, and genericness, where the trademark is considered generic and does not distinguish the applicant's goods or services from those of others. Furthermore, the trademark may be challenged on the basis of deceptiveness, meaning it could mislead consumers about the nature, quality, or geographical origin of the goods or services. Lastly, an opposition may arise from bad faith, where the application was filed with the intention of taking unfair advantage of the reputation of an existing trademark. The opposing party must provide evidence to support their claims during the opposition process, as these grounds are typically outlined in trademark laws and regulations.

Q: How do I know if someone has submitted an opposition against my trademark?

A: If someone has submitted an opposition against your trademark, the Norwegian Industrial Property Office (NIPO) will send a notification informing you about the opposition and what will happen further. Additionally, after a trademark application has been submitted, the trademark will be available to the public on the official NIPO website and database. By looking up your trademark in this database, you will be able to see all relevant information, including whether or not someone has submitted an opposition within the three-month period after the registration was published.

Q: How do I respond to a trademark opposition?

A: If your trademark registration in Norway is met with opposition from a third party, the procedure for how to respond will follow the letter in which the Norwegian Industrial Property Office (NIPO) notifies you of the opposition. Normally, the procedure involves responding to NIPO by arguing against the opposition. This depends on the basis for the opposition, whether it is likelihood of confusion, lack of distinctiveness, or something else. Alternatively, you can contact the third party who filed the opposition directly to try to resolve the situation with them. If, for example, it is a matter of likelihood of confusion, the situation can be resolved by agreeing on adjustments to the goods/services list. In all cases, it is recommended to contact a lawyer for assistance and advice.

Q: What happens during an opposition process?

A: An opposition case begins when the formal requirements are met, and the opposition is forwarded to the trademark holder, who has a deadline to respond. Extensions may be granted if both parties agree and submit a joint request, particularly if they are negotiating a settlement. The parties can resolve the issue before the Norwegian Industrial Property Office (NIPO) completes its review. The trademark holder can counter the opposition by addressing the grounds raised, such as asserting that their trademark is not confusingly similar to the prior trademark, that the trademark has gained distinctiveness before the opposition, that the opposing trademark has not been genuinely used, or that it lacks distinctiveness. The trademark owner must respond to all claims. Conversely, if the owner challenges the opposing trademark's use, the opposing party must provide evidence. NIPO does not request documentation or advise on its adequacy. After all parties have spoken and no further correspondence is necessary, NIPO will make a decision based on the arguments presented. Decisions can then be appealed to the Board of Industrial Rights by the party to whom the decision is unfavourable.

Q: Can my trademark be cancelled?

A: Yes, your trademark can be cancelled under certain circumstances. Common grounds for cancellation include non-use, where the trademark hasn’t been used in commerce for a specified period (usually five years); genericness, if it becomes a generic term for a category of goods or services; fraud, if it was obtained through fraudulent means; and likelihood of confusion, if it is too similar to an existing trademark. In all these situations, cancellation will only happen if a third party submits a request for cancellation. the Norwegian Industrial Property Office (NIPO) will not take such actions on its own initiative. Additionally, a trademark will lapse if renewal fees are not paid within six months after the expiration date.

Q: What is the difference between opposition and cancellation?

A: Opposition and cancellation are two important legal processes in trademark law, each serving unique functions within the trademark registration system. Opposition occurs during the registration phase of a trademark application. After a trademark is registered and published, third parties have a specified time frame of 3 months to formally challenge the registration. Grounds for opposition can include claims that the proposed trademark is too similar to an existing trademark, thereby creating a likelihood of confusion among consumers. This process allows interested parties to voice their concerns and prevent potentially problematic trademarks from being registered. In contrast, cancellation refers to the process of removing a registered trademark, normally after the 3-month opposition period is over. This action can be initiated by any interested party and is typically based on various grounds such as non-use of the trademark, abandonment, or failure to maintain distinctiveness. Unlike oppositions, cancellation-claims can therefore be filed at any time after a trademark is registered. The cancellation process often involves filing a formal petition with the Norwegian Industrial Property Office (NIPO) or through legal proceedings in court.

Q: What are the grounds for trademark cancellation in Norway?

A: In Norway, trademarks can be cancelled on several grounds. First of all, a trademark may be declared wholly or partially invalid if the trademark was registered in violation of registration requirements and/or -obstacles. This covers a range of circumstances, but it will usually be because the trademark supposedly lacks distinctiveness, is deemed descriptive, or infringes on the trademark rights of a third party. However, there are some narrow exceptions, such as the passivity of third parties. Secondly, a trademark can be wholly or partially cancelled due to lack of use or degeneration. A trademark may be subject to cancellation for non-use if it has not been actively used within five years of registration, or if its use has been discontinued for five consecutive years without a valid reason. Degeneration, on the other hand, occurs when a trademark loses its protection because it becomes synonymous with a general category of products rather than identifying a specific source. This often happens when the trademark is widely used in a generic sense, like "Kleenex" for all facial tissues. Cancellation due to genericness is, however, an unusual reason for cancellation. The common condiution for a trademark to be cancelled or declared invalid on these grounds is that a third party must proactively submit a request for administrative review of the registration.

Q: What are the criteria for having a trademark registration cancelled due to non-use?

A: To have a trademark registration cancelled due to non-use, several criteria must typically be satisfied. Firstly, the trademark must not have been used for a specific duration of five years, counting from the date of registration. Additionally, the trademark owner must be unable to provide sufficient evidence demonstrating that the mark has been genuinely used in commerce during the. Acceptable evidence might include sales records, advertisements, or packaging that features the trademark in use. Use by the trademark owner also includes use by another party with the owner's consent, typically licensees. A third party, such as a competitor or an interested party, must initiate a formal request for cancellation, often requiring the submission of a petition to the Norwegian Industrial Property Office (NIPO). Furthermore, the trademark owner must not have any reasonable excuse for their lack of use, with common valid reasons including market disruptions, financial hardship, or other legitimate circumstances that prevent the trademark's usage. A registration shall not be cancelled if the use of the trademark is started or resumed after the expiration of the five-year period, but before a third party takes actions against the registration on the basis of non-use. However, use in the last three months before the action is taken shall not be taken into account if preparations for the use were initiated only after the trademark holder became aware that a third party could take actions against the non-use.

Q: Must a trademark be used exactly as it is registered?

A: To fulfill the requirement of genuine use for a trademark, it does not need to be used exactly as registered, but it must maintain its distinctive character. Minor variations are acceptable as long as the trademark's essential features remain intact. The trademark must be genuinely used in commerce and not merely for the purpose of maintaining registration, and the trademark must be used in such way as a characteristic for the owners’ goods and/or services. It must also be used for the goods or services for which it is registered. Genuine use of a trademark for only some of the goods and services, may lead to the cancellation of the goods and services for which the trademark has not been genuinely used.

Q: Are there any excuses for non-use of a trademark?

A: Yes, there is one exception that excuses non-use during the 5-year period, preventing the cancellation of the registration. The condition is that there is a 'reasonable ground' for the owner not having used the trademark. A 'reasonable ground' for non-use of a trademark may exist if an external circumstance makes it impossible or unreasonably difficult for the trademark owner to use the mark. This includes not only factors affecting the entire industry but can also encompass individual circumstances. However, circumstances that the registrant has control over are not acceptable. There is also no reasonable ground if the registrant has no intention of using the mark but has only registered it defensively. Business or technical problems may be accepted, but typically only if these issues could not have been reasonably anticipated when the application was submitted. The circumstances that constitute a "reasonable ground" must also prevent the owner from putting the trademark in genuine use throughout all five years. Having a reasonable ground for non-use in only a couple of the five years does not excuse the lack of use during the entire period. Additionally, it should be expected that the trademark owner has made reasonable efforts to bring the product to market within the five-year period.

Q: What can I do if my trademark is cancelled?

A: If a trademark registration is declared invalid or cancelled it generally means that the exclusive rights to that trademark are forfeited. If the decision is made by the Norwegian Industrial Property Office (NIPO), you are able to appeal the decision to the Appeals Borad for Industrial Rights (KFIR). If the conditions for processing the appeal are met, (NIPO can overturn or amend its decision if it believes the appeal will succeed; otherwise, the case goes to KFIR. If the conditions are not met, the appellant is given a deadline to correct deficiencies, or the appeal will be dismissed. The Appeals Board will investigate relevant matters and can continue even if the appeal is withdrawn but will only consider issues raised in objections or administrative reviews. If KFIR decides that the decision of NIPO is correct, the invalidation or cancellation will be upheld. If the decision in in your disadvantage, you will still have the option to bring the decision before the court. The proceedings will then follow the general rules for court proceedings. If the decision to declare a registration invalid or cancelled is made by the court originally, the decision may be appealed further. If a final decision is made regarding the invalidation or cancellation of your trademark, resulting in such action, the only way to secure rights to your trademark will be to file another application (provided that the use of the mark has not resulted in the trademark acquiring protection through use). The relevance of this depends on the reason the trademark was declared invalid or cancelled.

Q: Is my trademark secured against oppositions from third parties after the opposition period has expired?

A: Yes, after the expiration of the opposition period, no one will be able to file an opposition against your registration. The trademark registration may, however, still be invalidated or cancelled due to actions from third parties through requests of administrative review or lawsuits before the courts.

Q: Can collective trademarks be registered in Norway?

A: Yes, collective trademarks can be registered in Norway. A collective trademark is a sign used by members of a collective organization or association to indicate that the goods or services come from that group. To be eligible for registration, the collective trademark must meet the same basic requirements as any trademark, including distinctiveness and not being descriptive. Additionally, the application must include a regulation that outlines the conditions for membership in the collective and the use of the trademark. The trademark must also serve to distinguish the goods or services of the members of the collective from those of other entities. Once registered, the collective trademark grants exclusive rights to its members to use the mark, provided they comply with the rules set by the collective organization.

Q: What happens if my trademark becomes a common word?

A: If a trademark becomes a common word, a process known as degeneration could occur. This means the trademark could lose its legal protection because it is now seen as a generic term for a type of product or service, rather than a brand identifier. Since the trademark becomes a common or generic name to designate goods and/or services, the trademark is no longer able to fulfil its original identification function. When this happens, anyone could legally use the term, and you would lose exclusive rights to it. Famous examples include "escalator," "zipper," and "aspirin," which started as trademarks but became generic terms over time. To avoid this, trademark owners often work to ensure that the public uses the trademark as a brand name (like "Kleenex tissues") rather than a general term for the product (just "Kleenex").

Q: Do famous trademarks have additional protection?

A: Yes, famous trademarks receive additional protection under Norwegian law. This legal framework allows trademark owners to prevent others from using similar marks, even when those marks pertain to unrelated goods or services. For instance, a well-known brand like "Coca-Cola" could take action against a product named "Coca-Kola," regardless of its market sector. Famous trademarks can be protected from use by others that would result in an unreasonable exploitation of or damage to the distinctive character or reputation of the well-known trademark. This protection is particularly important for maintaining the uniqueness of famous brands in the market. One key advantage of this protection is that famous trademarks do not need to demonstrate a likelihood of consumer confusion, which is generally required for standard trademarks. Instead, it is sufficient to demonstrate a risk of association with the famous mark. To qualify for this enhanced protection, a trademark must be established through use, meaning that the mark is well-known in the market area for the goods or services in question as a distinctive identifier of a particular entity. This extra layer of protection helps preserve the uniqueness of famous brands and prevents their identities from being diluted in the marketplace.

Q: Is it possible to register three-dimensional marks in Norway?

A: Yes, it is possible to register three-dimensional marks in Norway. Three-dimensional trademarks, also known as shape marks, can be protected if they meet specific criteria similar to other types of trademarks. To qualify for registration, a three-dimensional mark must, like other trademarks, be distinctive, meaning it should identify the goods or services of one enterprise and distinguish them from those of others. It can often be difficult to register the appearance or packaging of a product as a trademark, because such marks often lack distinctiveness, as consumers do not perceive the shape of a product as a trademark belonging to a specific entity. A shape necessary to achieve a technical result or that adds significant value to the product cannot be registered as a trademark. For example, one cannot obtain exclusive rights to a soda can without any additional design, as a standard soda can serves a technical function that other beverage manufacturers also need to utilize. Even if a shape does not constitute a purely technical function, it may still be unreasonable for one business to obtain exclusive rights to a shape that is common in the relevant industry. In such cases, it is often necessary to prove to the Norwegian Industrial Property Office (NIPO) that the specific shape has become well-known as the applicant's distinctive identifier through use.

Q: Is it possible to register non-traditional marks in Norway?

A: Yes, it is possible to register non-traditional marks in Norway. Non-traditional trademarks typically refer to three-dimensional shapes, sounds, colours, and scents. these types of trademarks can be protected, provided they meet the same essential criteria as traditional trademarks. The sound, colour or scent you wish to protect must therefore be distinctive. This means that the shape, sound, colour and scent must be perceived as a trademark belonging to anyone. If that is not the cases, other businesses must be free to use it in their marketing. For these types of non-traditional trademarks, it is often necessary to prove to the Norwegian Industrial Property Office (NIPO) that the specific shape, sound, colour or scent has become well-known as the applicant's distinctive identifier through use. And if that is the case, the trademark will have protection without registration regardless. Having the trademark registered, does however make it easier to enforce the rights.

Q: Is it possible to register an inherently indistinctive mark that has acquired distinctiveness through use?

A: Yes, it is possible to register an inherently indistinctive mark that has acquired distinctiveness through use in Norway. An inherently indistinctive mark is one that does not initially identify the goods or services of a particular business. However, if it can be demonstrated that the trademark has gained distinctiveness through extensive use in the market, it may still be eligible for trademark protection. This means that consumers have come to recognize the mark as identifying a specific source. To prove acquired distinctiveness, applicants must provide compelling evidence of the mark's use in commerce. This evidence can include sales figures, advertising expenditures, market surveys, and other data that demonstrate consumer association with the mark. When applying for registration, it is crucial to clearly demonstrate how the mark has acquired distinctiveness. The Norwegian Industrial Property Office (NIPOS) will assess this evidence during the application process.

Q: Can a trademark be limited to a certain geographical area?

A: Yes, a trademark might have protection only in a limited area. Trademarks are generally territorial, meaning their protection applies only within the regions or countries where they are registered. For instance, if a trademark is registered in Norway, its protection is confined to that country, throughout the realm. A business can choose to register its trademark in other jurisdictions if it wishes to expand its protection internationally. Exclusive rights to a trademark acquired through use, can however be limited to only parts of a country. This means that if a business has been using a trademark in a specific location, it may develop rights within that area, which can help prevent others from using the same or a confusingly similar mark locally. In that case, a trademark will be protected within this area, but not in other parts of the country. Therefore, a trademark owner may not be able to prevent the use of their trademark in regions where they do not have a presence or recognition.

Q: Does a trademark apply internationally?

A: Yes, a trademark may apply internationally. However, this assumes that the holder has applied for trademark registration, or meets the requirements for acquired distinctiveness through use, within all jurisdictions. Trademark rights are fundamentally territorial, meaning that a trademark registration generally provides protection only in the specific country where the registration is made. A registration in Norway, for instance, will only grant protection in Norway. If you wish to obtain protection in other countries, you must, in principle, apply for trademark registration in those countries. From this principle, there are some exceptions. For example, one can apply for trademark registration through regional application systems. Most common are the EUIPO, which allows for a registration that is valid in all member states of the EU, and ARIPO, which provides protection in 22 countries in Africa.

Q: How do trademark rights apply to businesses operating in multiple countries?

A: Trademark rights are fundamentally territorial, meaning that a trademark registration generally provides protection only in the specific country where the registration is made. A registration in Norway, for instance, will only grant protection in Norway. If you wish to obtain protection in other countries, you must, in principle, apply for trademark registration in those countries. This means that if you plan to use your trademark as a part of your business in other countries, it will be necessary to seek protection in those jurisdictions as well. It is also generally recommended to register the trademark in the country where your goods will be produced to avoid issues with customs when exporting those products.

Q: How can I register my trademark in other countries?

A: Trademark rights are fundamentally territorial, meaning that a trademark registration generally provides protection only in the specific country where the registration is made. A registration in Norway, for instance, will only grant protection in Norway. If you wish to obtain protection in other countries, you must, in principle, apply for trademark registration in those countries. This can be done by submitting an application directly to the registration office in the country where you seek protection, usually through a local representative in that country. It is also possible to apply for regional protection, which allows one application to provide protection in multiple countries. The most common method is the EU application through EUIPO, where one application grants protection in all member states, provided that the application meets the registration requirements in all of those countries. If registration cannot be completed in one country, for instance, due to a similar trademark being registered in that specific country, protection will not be granted for the entire EU. To simplify the application process, WIPO (World Intellectual Property Organization) offers the Madrid System for international trademark registration. This allows businesses to register their trademarks in multiple countries with a single application. Before applying, the trademark must be registered or applied for directly in one country, and goods or services should follow the Nice Classification. The application is submitted to the national registration office, which forwards it to WIPO for publication and protection in selected countries.

Q: Do I need to register my trademark separately in each country?

A: Yes, generally, you need to register your trademark separately in each country where you seek protection, as trademark rights are territorial. This means that a trademark registration in one country does not provide protection in another. However, there are international systems, such as the Madrid System through WIPO, which allow you to file a single application to obtain trademark protection in multiple countries simultaneously. Additionally, you can pursue regional registrations, like those offered by EUIPO, which grant protection across all EU member states with one application. These options can simplify the process and reduce costs, but you must still meet the specific requirements of each jurisdiction.