Trademark Registration: How to Register Trademarks in Norway and EU?
Trademark protection is achieved either through registration or by establishing rights through use. Although trademark protection should, in principle, be equivalent in both cases, registration typically offers several additional advantages. But what are these advantages, why should you register your trademarks, and how does trademark registration work in different parts of the world?
Codex Advokat has the answers to all these questions and can provide the experience and knowledge necessary to ensure comprehensive and effective trademark protection for you and your business.
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22 93 38 50Why Should You Register Your Trademark?
A trademark will grant you exclusive rights to use the mark in the course of trade for the goods and services it is registered for. Should your company face a dispute over rights to the company name, having a trademark registration will also strengthen your position.
Additionally, a trademark registration provides increased assurance that your business is not infringing on the rights of others.
What Are the Costs of a Trademark Application?
The cost of a trademark application depends on the number of classes for which the mark is sought to be registered. The classification system consists of 45 different classes of goods and services.
Cost in Norway
The cost for submitting a trademark application in Norway is as follows:
- NOK 7,500* ex VAT (Codex Advokat's fee)
- NOK 3,800* (Public fee to the Patent Office)
* This is based on an application for 1 class. For trademark applications covering more than one class, there will be an additional charge of NOK 500 + VAT in fees and NOK 1000 in public fees per extra class.
Cost in EU
The cost for submitting a trademark application in the EU is as follows:
- NOK 8,000* ex VAT (Codex Advokat's fee)
- EUR 850* (Public fee to the EUIPO)
* This is based on an application for 1 class. For trademark applications covering more than one class, an additional charge of NOK 500 + VAT per extra class will apply, and EUR 50 in public fees for the second class, with EUR 150 per additional class beyond the second.
Work performed after submission will be billed based on time spent, at the agreed hourly rate. We can provide estimates for extensive work before commencing the work.
The Process Towards Obtaining a Registered Trademark
Thorough preliminary work before selecting a trademark will enhance the likelihood of the trademark application being granted and help ensure that the business secures a well-functioning trademark.
Before submitting the trademark application, you must compile a comprehensive list of the goods and services for which you wish to register the mark, ensuring that all relevant items are included. After submission, it is not possible to expand the list of goods and services. It is therefore important to carefully consider the list of goods and services.
Which Types of Trademarks Are Eligible for Registration?
After submission, the Norwegian Industrial Property Office (NIPO) will assess whether the trademark application meets the requirements of the Trademark Act. This assessment includes determining:
- Whether the mark is capable of distinguishing the goods and/or services for which registration is sought from those offered by other actors. The trademark must not merely describe the nature, quality, quantity, purpose, value, geographical origin, production time, or other characteristics of the goods or services.
- Whether the mark may be confusingly similar to existing trademarks, trade names, or other registered or established business identifiers.
Based on this evaluation, the Patent Office may either:
- Approve the application, in which case the trademark will proceed to registration and publication, or:
- Issue a preliminary refusal of the entire application or parts thereof if it does not meet the requirements set out in the Trademark Act.
If the trademark is accepted for registration, there is a three-month period during which third parties may file oppositions against the registration. If an opposition is filed, the Patent Office will handle the case, allowing both parties to present their arguments before making a formal decision. This decision can be appealed to the Norwegian Board of Appeal for Industrial Property Rights (KFIR).
Should the Patent Office rejectthe application, the applicant may contest the refusal. If the refusal is based on an existing right, the applicant may seek consent from the holder of that right. We can create a strategy to address any potential obstacles.
In the event of an appeal, there is a risk that NIPO may uphold its refusal. The applicant may then submit further arguments, and this process may involve multiple rounds of argumentation.
For a trademark to be accepted for registration, it must be capable of distinguishing your goods and services from those of others. Marks that merely describe the nature or characteristics of the goods or services, or are otherwise generic, will not be accepted. For example, “calendar” cannot be registered for calendars. Furthermore, a trademark cannot be registered if it is misleading or likely to be confused with existing trademarks, trade names, or other identifiers.
We offer a preliminary search to identify potential obstacles before the application is filed. Contact us, and we can help you to avoid unnecessary costs.
How Long Does a Trademark Registration Last – Renewal
In Norway, a trademark registration is valid for ten years from the date of application. To ensure that the trademark remains in force and continues to provide protection, the registration must be renewed before the end of the ten-year period.
To renew a trademark registration in Norway, you must submit a renewal application to NIPO and pay the renewal fee. It is important to be aware of the specific requirements and deadlines for renewal set by NIPO to ensure that the registration does not lapse.
Regular renewal is essential to maintain your rights to the trademark and prevent it from being used by others or becoming a generic term.
Register Your Trademark with Us: What Do We Need from You?
The most important information we need from you is details about the trademark you wish to register.
We also require information about the goods and services for which the trademark will be used. In this context, we will be able to provide advice regarding which classes may be relevant to register. Based on the information we receive, we will prepare a proposed list of goods and services. This proposal will be submitted to you for approval before we file the application.
Our Expertise - Get to Know Our Attorneys:
Our attorneys at Codex Advokat have extensive experience in assisting with trademark matters both in Norway and the EU, as well as in other countries, for both small and large companies.
Questions? We Are Here to Assist You!
Codex Advokat specializes in trademark law and can assist with trademark registrations, creating global trademark strategies, and trademark disputes.