Trademarks - significant changes to Norwegian law (EN)

On 14 February 2020, news broke that Norway would implement Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (the "New Trade Mark Directive ") in Norwegian law. The New Trade Mark Directive replaces the Trade Mark Directive 2008 (2008/95/EC).

Amendments to the Norwegian Trademark Act are put forward, as well as certain amendments to the Norwegian Companies Name Act, the Norwegian Design Act and the Norwegian Patents Act. Amendments to the Norwegian Customs Act, Chapter 15 and the Norwegian Dispute Act, Section 34-7 are also proposed to strengthen the customs authorities' control of goods that infringe on intellectual property rights.

The Minister of Justice, Monica Mæland, has stated that the work against piracy and counterfeiting is also important in order to protect consumers and to fight organized crime. Some of the major amendments can be summed up as follows:

  • Amendments to the Norwegian Mortgage Act are proposed to allow for special pledges in registered trademarks.
  • The requirement under the Norwegian Trademark Act, Section 14, stating that the trademark must be able to be reproduced graphically is amended, whereafter the requirement is that the trademark must be reproducible in the trademark register in a clear and unambiguous manner.
  • Trademarks which consist solely of a feature other than the shape of the goods, and which, by virtue of the nature of the goods, is necessary to obtain a technical result or add significant value to the goods, will not be able to obtain protection.
  • New grounds for refusal for protected geographical indications and plant variety names.
  • Separate grounds for refusal to registration in cases where a trademark has been applied for in bad faith, or by an agent or representative of the trademark owner without the trademark owner's consent.
  • New regulations concerning the trademark owner's ability to intervene in preparatory actions related to the manufacture and sale of false labels and other means by which a registered trademark may be placed.
  • New regulations concerning the right to take actions against counterfeit goods in transit.
  • The right to prohibit the agent or agent's use of the trademark where it has applied for registration of the trademark in its own name without the consent of the trademark owner.
  • New system whereby the customs authorities themselves can make decisions to cease goods upon application by licensees.
  • A simplified procedure for the destruction of goods, to be used where there is a decision on assistance from the customs authorities.

The amendments are likely to provide a massive boost for trademark owners in the fight against counterfeit goods. We believe the amendments will increase the efficiency of trademark enforcement and strengthen the protection of both consumers and trademark owners.

Lawyers

Thomas Hagen
Halvor Manshaus
Knut Sverre Skurdal Andresen
Sigurd Holter Torp
David Særsten Brambani

Published

02. March 2020