Business impacts of the new amendments to the Norwegian Trademarks Act

by Anna Eide and Thomas Hagen


People in different floors

The long-awaited amendments to the Norwegian Trademark Act will enter into force on 1 March 2023, incorporating the new Trademark Directive 2015/2436 into Norwegian law. Seven years after the EU adopted the directive, the Norwegian Trademark Act will be modernised, clarified, and harmonised further with EU trademark legislation. Norway will have a more technology-neutral Trademark Act that also allows trademarks to be separately pledged. In this article, we look at some of the changes to the Norwegian Trademark Act and explain how these will affect Norwegian Trademark law.

Trademark applications submitted in "bad faith"

The first amendment worth noting is the introduction of a new ground of refusal and invalidity for trademarks registered in "bad faith". The new ground for refusal and invalidity will replace the former section 16 litra b in the Norwegian Trademark Act and offer a more flexible and dynamic ground for refusal and invalidity. The amendment means that the term "bad faith" will be fully adopted into the Norwegian Trademark Act, offering a more comprehensive assessment of whether a trademark shall be found to be invalid or refused.

According to the former section 16 litra b in the Norwegian Trademark Act, a trademark registration would be refused or found to be invalid if (i) the mark was confusingly similar to another mark, (ii) that mark was used by a third party before the applicant, and is still being used by the third party, and (iii) the applicant knew of the third party's use, and (iv) the trademark application was submitted in breach of good business practices. In contrast to the former regulation, the new ground of refusal and invalidity will only require that the trademark applicant submitted the trademark registration in "bad faith".

Although the change may seem substantial, the new provision will still, at its core, target applications that can be seen as a breach of good business practices. Further, the four abovementioned requirements will be important factors in the overall assessment of whether a trademark registration has been submitted in "bad faith". However, the term "bad faith" shall be interpreted in accordance with EU practice, giving the new ground for refusal and invalidity a more flexible scope where public interests may be taken into account when assessing the trademark application, such as safeguarding the integrity of the trademark institute.

You can find our more in-depth article on the implementation of "bad faith" as a ground for refusal and invalidly here.

Trademarks registered by agents or representatives without the proprietor's authorisation

A new ground for refusal and invalidity will be introduced for cases where an agent or representative of a trademark proprietor applies for a trademark without the proprietor's authorisation. In such cases, the proprietor will also be able to demand that the registration is assigned to the proprietor and that the agent or representative ceases the use of the trademark. The new addition to the Norwegian Trademark Act offers a clear regulation of former non-statutory law.

Trademarks achieving distinctiveness after the application date

The new Norwegian Trademark Act will offer a more lenient approach to trademarks that have achieved the necessary distinctiveness through use after applying for trademark registration. Until 1 March 2023, trademarks registered without the trademark being sufficiently distinctive on the application date would be cancelled if met with an opposition or invalidity claim. Following the amendment of the Norwegian Trademark Act, trademark owners can maintain priority on the application date (or other priority dates) if the trademark meets the distinctiveness requirement at the date of opposition or claim for invalidity.

However, a trademark that achieves distinctiveness after registration does not provide a basis for cancelling registrations of younger marks that were protected before the first trademark acquired distinctiveness. In other words, new (third party) trademarks that are registered after the application date of an older trademark but before the older trademark has received the necessary distinctiveness through use, can only be found to be invalid if the claim would have prevailed at the application or priority date of the new (third party) trademark.

The new regulation will offer trademark holders a better position, as they may maintain trademark registration despite lacking distinctiveness at the application date as long as it acquires distinctiveness before being met with opposition or invalidity claims.

Lack of actual use as a defence

The lack of actual use of a registered trademark may be used directly as a defence against infringement claims and opposition. The new Norwegian Trademark Act will offer the possibility of citing non-fulfillment of the duty of use in opposition and infringement cases. This makes an exception to the general Norwegian rule that older trademark registrations are assumed to be valid and effective without further assessment. The new regulation will not affect NIPO's application processing, and older trademarks will therefore be regarded without a review of whether the older mark has fulfilled the use requirement.

According to the new Norwegian Trademark Act, the defendant may require that the complainant provide evidence of actual use of the trademark that is the basis of the opposition or invalidity claim. If the complainant cannot evidence such use, the opposition or claim for invalidity shall not be met. Furthermore, if the complainant has only used the trademark for parts of the goods and services which the trademark is registered for, only these goods and services will be the basis of the opposition or claim for invalidity.

Seperate trademark pledge

Following the change in the Norwegian Trademark Act, separate trademark pledges may be noted in the Norwegian trademark register. Furthermore, in cases where there is a conflict between the acquisition of rights that results in the voluntary transfer of a registered trademark, such as an application, pledge of a trademark or licence and a creditor disbursement or arrest, the acquisition of right that was first registered in the trademark registry will have precedence. However, the new Norwegian Trademark Act does not regulate how similar conflicts with unregistered rights should be handled. The practical result of this change is that assignments and licenses should be registered in the trademark register to receive legal protection.

The transition to the amendments

As mentioned in the introduction, the amendments to the Norwegian Trademark Act will enter into force on 1 March 2023. Trademark applications that are submitted before 1 March 2023 will not be assessed based on the new and amended sections of the Norwegian Trademark Act. Furthermore, such trademarks may only be found invalid, refused or deleted if there is a basis for such a decision in the Norwegian Trademark Act before 1 March 2023. However, the new regulation on non-use described above will also apply for trademarks registered before 1 March 2023.

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