Long-awaited Norwegian trademark amendments create greater harmony with EU law
Distinctiveness, bad faith and protection for black and white imagery are just some of the trademark act changes in Norway, write DLA Piper lawyers Lill Grimstad and Oscar Lorenz Melaa
On March 1, 2023, the long-anticipated amendments to the Norwegian Trademark Act came into force. Although Norwegian trademark legislation is highly harmonised with EU law, Norway remains a separate jurisdiction. This means that businesses need to ensure protection of their trademarks in Norway in addition to the European Union. With a gross domestic product per capita of just over NOK1m, and a population regularly ranked among the highest in terms of purchasing power, Norway will continue to be an important and unique market for luxury goods and services.
The new amendments aim to harmonise Norwegian law even further with EU law, in particular EU directive 2015/2436. For luxury brand owners, some of the key changes include:
- Claims for rejecting or removing previously registered trademarks for ‘lack of distinctiveness’ will no longer be successful if the trademark has achieved distinctiveness since the application was submitted and before the counterparty submits its claim. With the change, distinctiveness that has been achieved through use of the trademark will provide legal protection. The change provides additional safeguards for the trademark holder. For owners of luxury brands, the new amendments should allow for earlier trademark applications when entering the market, thereby reducing the risk of potential counterapplications.
- The concept of ‘bad faith’ has been expanded. Previously, only certain acts of bad faith provided grounds for rejection or cancellation of a trademark application or registration. Now, any trademark sought that is registered in bad faith will be rejected. In addition, a special provision has been introduced for agents and representatives, who will now be prevented from registering the trademark in their own name without having the owner's consent. The changes will make it more difficult to highjack trademarks and prevent disloyal distributors from registering trademarks in their name.
- Statements of non-use can now be used as a defense in cases where an owner of an older trademark attacks another's trademark registration, with the claim that it conflicts with the older trademark registration. Previously, the other party would have had to bring forward their own separate case if they believed the older rights had lapsed and should be deleted as a result of non-use. This type of objection can now be processed and decided in the same case.
- There are also changes regarding access to individual and separate pledging of registered trademarks and applications. Unlike patents, trademarks and trademark applications have not been eligible for individual pledging under Norwegian law, until now. As trademarks can be very valuable, this could potentially provide very good security for loan providers and great financial benefit for the rightsholder. How to value the specific trademarks and brands will, however, likely pose a few challenges. New conflict rules have also been introduced, establishing that pledges can now be noted in the Trademark Register (providing legal protection), which ultimately entails that if a mortgagee does not note the pledge in the Register, they risk losing their rights, if the trademark is later transferred and the new owner (unaware of the previous pledge) notes the transfer in the Register. For luxury brand owners with highly valuably trademarks, the new changes should allow for easier financing.
- Trademarks registered in black and white (after entry into force) will no longer receive protection for all colours. Under the prior act, the practice was that trademarks registered in black and white automatically received protection for all colour combinations. This will not continue under the new Trademark Act (although a transitional rule with further provisions in regulations has been proposed). All trademark applications submitted before March 1, 2023, will be assessed according to the old practice, while all applications for marks in black and white submitted after March 1 will receive narrower protection. Trademark owners must therefore now be more conscious of the specific colours of the brand and assess the consequences of applying for black and white and/or specific colours.
- Finally, a change in the registration and renewal fee for trademarks and collective marks also came into force on March 1. Previously, the initial fee covered registration in three classes of goods or services, while it now only covers one. Consequently, for each additional class of goods or services for which trademark protection is sought, an additional fee will apply. This will also apply to preliminary investigations. The rationale behind the change is to reduce the number of registrations in ‘unused’ classes, so-called ‘clogging’ of the system.
With more than 25 years of IP experience, DLA Piper partner Lill Grimstad's practice focuses on a wide range of contentious and non-contentious advice across multiple sectors including energy, maritime and life sciences, counselling and prosecution of IP rights before the Norwegian and European IPOs. She can be reached at email@example.com. DLA Piper associate Oscar Lorentz Melaa's practice focuses on IP and technology law. He can be reached at firstname.lastname@example.org.
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