Ley de Marcas de Fábrica o de Comercio (Ley Nº 4 de 3 de marzo de 1961) (versión consolidada de 1995), Noruega

Trademarks Act

Act No. 4 of March 3, 1961, as amended by Act No. 9 of June 21, 1963,
Act No. 33 of May 29, 1970, Act No. 47 of June 16, 1972,
Act No. 79 of June 21, 1985, Act No. 113 of November 27, 1992,
and Act No. 82 of December 22, 1995.

Chapter 1. General Provisions

§ 1 By registration in accordance with the present Act, the sole right to use a trademark as a distinctive sign for an establishment’s goods or services may be acquired.

A trademark may consist of any sign which is capable of distinguishing the goods or services of an establishment from those of others, and which is capable of being represented graphically, such as words or combinations of words, including slogans, names, figures and pictures, letters and numerals, and the shape of the goods and their packaging.

The subsequent provisions of this Act concerning goods shall also apply to services provided this is not contrary to the context.

§ 2 The sole right to a trademark may also be acquired without registration when the trademark is established by use.

A trademark is considered to be established by use when it is well known within the circle of trade

concerned in this country as a distinctive sign for someone’s goods.

§ 3 Anyone has the right in the course of trade to use his name or the name of his business as a sign for his goods, provided this is not done in such a way that it is likely to be confused with a trademark or a name of a business which is already protected for someone else, or with a name someone already rightfully uses in the course of his trade.

Legislative Texts

§ 4 The right to a sign in accordance with Sections 1 to 3 has the effect that no one except the holder may in the course of trade use the same sign for his goods, cf. the third period. This applies whether the sign is being used on the goods or their packaging, in advertising, in business documents or in any other way, including spoken mention, and regardless of whether the goods are meant to be sold or offered in any other way in this country or abroad, or imported into this country. The same sign in the present Act shall be understood as a sign that is so similar to another sign, that it is likely to be confused with this sign in the ordinary course of trade, cf. Section 6.

It shall also be regarded as unlawful use if anyone in selling or offering spare parts, accessories, or the like, refers to a sign which is the property of someone else in such a way as to give the wrongful impression that the goods offered originate from the holder of that sign or that he has consented to the use of that sign.

Where a sign as referred to in Sections 1–3 has been in legitimate use for a product and the product afterwards has been substantially altered by processing, repairs, or the like by someone other than the holder of the sign, the sign must not, without the consent of the holder, be kept or used for the product if the product is subsequently imported, sold or offered in the course of trade, unless the alteration is clearly indicated or is otherwise apparent from the circumstances.

§ 5 The right to a sign does not entitle the holder to a sole right to such parts of the sign as mainly serve to make the goods or the packaging more suitable or otherwise serve another purpose than being a sign.

The right to a trademark does not entitle the holder to prohibit a third party from using his own name or the name of his business or his address in the course of trade in accordance with fair trade practice.

§ 6 Under the present Act signs shall only be considered likely to be confused if they relate to identical or similar goods. This is however not a necessary condition for likelihood of confusion when the sign with the earlier right is the holder’s own name or of the name of his firm.

Signs that are similar shall however be considered likely to be confused even if they do not relate to identical or similar goods, if the sign with the earlier right is so well known and established in this country that it would imply an unreasonable utilization or be detrimental to its goodwill if the other sign was to be used by someone else.

§ 7 Where several independent parties claim a sole right to the same sign according to Sections 1 to 3, the earliest claim shall have priority, provided this is not contrary to the provisions in Sections 3, 8 or 9.

§ 8 Although a registered trademark is likely to be confused with a sign which has an earlier right, it shall be allowed to exist validly side by side with the latter, provided the application for registration was filed in good faith and the holder of the earlier right has knowingly tolerated the use of the later trademark for five consecutive years from the date of registration.

§ 9 A later right to a sign shall also be allowed to exist side by side with an earlier right provided:

(a)

the later right has been established by use and the holder of the earlier right has taken no steps within a reasonable time to prevent the use of the other sign; or

(b)

the rights to the signs have been established by use in different parts of the country and it is presumed that both signs may continue to be used as before, without any likelihood of confusion with regard to whom the goods originate from.

§ 10 In order to prevent any likelihood of confusion as referred to in Sections 3, 8 and 9, a court of law may, where this is found reasonable, order that one or both of the signs may in future only be used for particular goods or within a certain area or in a particular manner, such as in a certain shape or form or with a reference to a geographical location or with the addition of the name of the holder or with any other elucidating addition.

§ 11 When publishing of a dictionary, manual, textbook or similar nonfictional publication, the author, chief editor and publisher are obliged, at the request of the holder of a registered trademark, to ensure that the trademark is not reproduced in the publication unless it is clearly stated that it is protected by registration.

Legislative Texts

If a request made in due time and in accordance with the preceding paragraph is not met, the person to whom the request was addressed may be required to pay the expenses of a notice of rectification published in such a manner and as widely as is deemed reasonable.

Chapter 2.
Registration of Trademarks

§ 12 A Register of Trademarks shall be kept for the whole country by the Patent Office (Patentstyret).

§ 13 For a trademark to be registered it must be capable of distinguishing the goods of the holder from those of others. The trademark may not exclusively, or with no more than minor alterations or additions, indicate the kind, quality, quantity, use, price or the place or date of their production. In deciding whether a trademark has a distinctive character, however, all factual circumstances shall be taken into consideration, in particular how long and how extensively the trademark has been in use.

Trademarks which consist exclusively of the shape of goods or their packaging may not be registered if the shape or the packaging results from the nature of the goods themselves, is necessary to obtain a technical result, or gives significant value to the goods.

§ 14 A trademark may not be registered if:

1. it is contrary to law or public order or is likely to cause offence;
2. it is likely to deceive;
3. without authorization by the competent authorities, it includes official coats of arms, flags or other official emblems or badges, including official national or foreign certification or hallmarks or stamps required for goods identical with or similar to those for which registration is being applied for, or coats of arms, flags or other emblems, abbreviations or designations of intergovernmental organizations, or international marks, seals or signs the unauthorized use of which is forbidden by law. Nor shall the trademark be registered if it includes anything likely to be confused with such emblems or badges, etc. as referred to in this Section. Foreign emblems or badges, etc., with the exception of flags of States, shall nevertheless not prevent registration until they have been published in a notice in the publication issued by the Patent Office;
4. it includes anything likely to be understood as another person’s business name or as another person’s name or portrait and which does not obviously refer to a person deceased a considerable time ago;
5. it includes anything likely to be understood as the distinguishing title of another person’s protected work of intellectual achievement, or infringes the copyright to such a work or the right to a photography or a design;
6. it is likely to be confused with another person’s name or business name or with a trademark registered for another person in accordance with an application filed earlier, or which was established by use for another person at the time when the application for registration was filed;
7. it is likely to be confused with a trademark which someone else had begun using before the applicant, and the applicant was aware of this use when he filed his application for registration;
8. it is likely to be confused with an international registration of a trademark, provided that this registration is effective in Norway in accordance with Section 53 from an earlier date than the date of the filing of the application.

In cases as mentioned in subparagraphs 4 to 8 of the first paragraph, registration may nevertheless take place if the holder of the earlier right consents and there are no other obstacles according to the first paragraph that prevent registration.

§ 15 The sole right acquired by registration of a trademark does not include such part of the trademark as would be refused separate registration.

Legislative Texts

If the trademark includes such a part, and the Patent Office presumes that registration of the trademark may create uncertainty as to the extent of the sole right, it may at the time of registration clearly be stated by a disclaimer that the part is excluded from the legal protection.

If it is later shown that the part of the trademark which was excluded from legal protection may be registered, a new application for registration may be filed for that part alone or the trademark as a whole without the previous disclaimer.

§ 16 A trademark shall be registered for specified goods within specified classes of goods. Provisions regarding the classification of goods shall be issued by the King.

§ 17 An application for registration of a trademark shall be filed in writing to the Patent Office. The application shall state the applicant’s name or business name, and include a reproduction of the trademark and a list of the goods for which registration of the trademark is being applied for. The application shall otherwise meet the requirements set forth in the regulations and enclose the stipulated fee.

An application is not regarded as filed as long as a reproduction of the mark has not been received by the Patent Office.

§ 17a The application and all its enclosures and documents shall be kept available for anyone from the first working day after filing of the application by the Patent Office, unless a request as referred to in the second paragraph has been filed.

If a document contains business secrets, the Patent Office may, when particular reasons exist and a request has been filed, decide that the document shall not be made available to the public. When such a request has been filed, the document will not be available to the public until the request has been refused by a final decision. The reproduction of the mark and the information that registration of the mark in this country has been applied for, and the list of the goods for which registration has been applied for, are not considered business secrets according to the provisions in this paragraph.

Proposals, drafts, reports and other similar working papers that the Patent Office prepares for the examination of an application are not available to the public unless the Patent Office should so decide.

§ 18 If someone files an application for registration of a trademark that is first used on goods shown at an international exhibition in this country, and the application is filed within six months after the opening of the exhibition, the application shall, in relation to other signs that someone else has applied to have registered or started to use, be deemed to have been filed on the day the goods were first shown at the exhibition.

The King may issue regulations to what extent the first paragraph shall apply correspondingly to international exhibitions abroad.

§ 19 If an application for registration of a trademark is not in the prescribed form, or there otherwise are obstacles that prevent registration, the Patent Office shall notify the applicant of this. The applicant shall be given a suitable time limit to respond and in the event to remedy the application.

Irregularities in the application shall not prevent the application from being regarded as filed on the day when the reproduction of the mark was received by the Patent Office, provided that those irregularities will be remedied within the time limit set by the Patent Office.

If the applicant does not respond or remedy the irregularity within the expiration of the time limit, the application shall be considered abandoned. The processing of the application shall be resumed if the applicant within two months from the expiration of the time limit responds or remedies the irregularity and pays the stipulated fee. Resumption can only be granted once during the processing of the application.

If the applicant has responded to the notification from the Patent Office within the set time limit, but the Patent Office still finds there to be irregularities regarding the application, the application shall be refused unless the Patent Office finds that the applicant should be given another notification with a new time limit.

§ 20 If the application is in the prescribed form, and there otherwise are no obstacles that prevent registration, the mark shall be registered and a letter of registration shall be sent to the applicant.

The registration of a trademark shall be published.

Legislative Texts

§ 21 Anyone can file an opposition to the registration of a trademark. An opposition shall be presented in writing, state the reasons for the opposition and being filed with the Patent Office within two months of the date of publication. The Patent Office can in special cases on request grant the opposer a short additional time limit to supply further documentation to support the opposition.

The Patent Office shall dismiss an opposition which does not meet the requirements in the first paragraph.

The Patent Office shall notify the holder of the registration of oppositions and shall give him the opportunity to comment on them.

If an opposition to the registration of a trademark is filed, this shall be recorded in the Trademark Register and be published.

Even if the opposition is withdrawn, processing of the opposition may continue if particular reasons so indicate.

§ 21a Following an opposition the Patent Office shall cancel the registration of the trademark in whole or in part if the trademark was registered in contravention of the present Act and the obstacle that prevents registration still exists.

The Patent Office shall reject the opposition if there is no obstacle to upholding the registration.

When the Patent Office’s decision concerning an opposition is final, the notification of the final decision shall be recorded in the Trademark Register and be published.

§ 21b If after an application for registration of a trademark has been granted another application is filed which according to Sections 18 or 30 shall be considered filed earlier than the first mentioned application, and the Patent Office presumes that the second application would have been regarded as an obstacle that prevents registration of the first mentioned application, the Patent Office shall notify the holder of this and give him an opportunity to respond to this within a set time limit. If the application with the better priority is granted the Patent Office shall, after the expiration of the time limit, cancel the first registration in whole or in part if the application with the better priority in whole or in part prevents the registration from being upheld.

The first paragraph applies correspondingly if the Patent Office presumes that an earlier application which is resumed according to the third paragraph of Section 19, or after reinstatement according to Section 60, would be considered an obstacle that prevents registration for a later application which already has been granted.

The first paragraph also applies correspondingly if the Patent Office receives notification that an international registration shall be considered valid in Norway and it presumes that the international registration would have been considered an obstacle to the registration of a granted application which is considered filed at a later date than the date on which the international registration shall come into effect in this country, cf. Section 53.

If the registration of a trademark is cancelled in whole or in part according to this Section, the cancellation shall be recorded and be published when it is final.

§ 21c If a trademark has clearly been registered by mistake, the Patent Office may ex officio within three months from the date of the registration cancel the registration in whole or in part.

If the registration of a trademark is cancelled in whole or in part according to this Section, the cancellation shall be recorded and be published when it is final.

§ 22 The final decision of an application for registration made by the Patent Office may be appealed to the Board of Appeals if the decision is in disfavour of the applicant.

The final decision of an opposition may be appealed by the holder or the opposer if the decision is in disfavour of the concerned party.

A final decision by the Patent Office regarding cancellation of a registration in whole or in part according to Sections 21b or 21c, may be appealed by the holder to the Board of Appeals.

Legislative Texts

If a request for resumption according to the third paragraph of Section 19, or a request for secrecy according to the second paragraph of Section 17a, is refused, the decision may be appealed to the Board of Appeals by the party the refusal concerns.

§ 22a An appeal must be filed with the Patent Office within two months from the date the notification of the refusal was sent to the concerned party. Within the same time limit the stipulated fee shall be paid. The appeal shall otherwise not be processed.

Even if the appeal is withdrawn, it may be examined if particular reasons is indicated.

A decision where by the Board of Appeals refuses an application for registration of a trademark, cancels a registration or upholds a decision by the Patent Office regarding cancellation of a registration, can not be brought before the courts of law later than two months after the notification of the decision was sent

to the applicant or the holder.

Information of the time limit for taking legal action shall be stated in the notification.

The second and third paragraph of Section 17a apply correspondingly to documents filed to the Board

of Appeals.

§ 23 The registration is effective from the day the application is considered filed with the Patent Office according to Section 17, or from the day it is considered filed according to Sections 18 or 30. The registration is valid for ten years from the day of the registration.

§ 23a A registration of a trademark can be renewed at the request of the holder for ten years at a time, counting from the expiration of the previous registration period.

A request for renewal shall be filed in writing to the Patent Office one year at the earliest before or six months at the latest after the expiration of the registration period, and must enclose the stipulated fee. If the request for renewal is filed after the expiration of the registration period, an additional fee must also be paid.

Payment of the renewal fee, stating the trademark’s registration number, made within the time limits referred to in the first paragraph, shall be regarded as a written request for renewal.

Sections 19, 20, 21c, 22 and 22a apply correspondingly as appropriate to the processing of requests for renewal.

§ 24 On an application from the holder and for payment of a stipulated fee, minor alterations, which do not affect the impression of the trademark as a whole, may be made to a registered trademark. The alteration of the mark shall be recorded in the Trademark Register and a new letter of registration shall be sent to the holder. Notification of the alteration, with a reproduction of the trademark in the altered form, shall be published. Section 21c applies correspondingly.

Chapter 3.
Cessation of Registrations, etc.

§ 25 If a trademark has been registered in contravention of the present Act, the registration may be invalidated by a court ruling, unless it can remain valid according to the provisions in Sections 8 to 10. The registration can however not be invalidated for the reason that the mark is likely to be confused with another trademark, if the requirements set forth in Section 25a for deletion of the registration of the other trademark from the Trademark Register are met.

A registration may be deleted from the Trademark Register by a court judgment if the mark after registration has obviously lost its character as a distinctive mark or it has become deceptive, contrary to public order or likely to cause offence.

Legislative Texts

§ 25a Where the holder of a registered trademark has not used the mark in this country for the goods which it is registered for within five years from the date of the registration, or if the use has been interrupted for five consecutive years, the registration may be deleted from the Trademark Register by a court judgment, unless there are reasonable grounds for nonuse. Use of the mark includes use of the mark in a form that only differs from the form it is registered for in details that do not affect its distinctiveness, and in this country placing of the mark on goods or their packaging for export. As the holder’s use of the mark is also reckoned use of the mark by someone else with the holder’s consent.

The registration can not be deleted if the trademark is taken into use or the use of the mark is resumed after the expiration of the five year-period, but before an action for deletion has been brought. Use of the mark in the last three months before an action is brought shall be disregarded, if the preparations for the use were only begun after the holder learned that an action might be brought.

If the trademark has been used for some of the goods the mark is registered for, the registration shall only be deleted for the goods which the mark has not been used for.

§ 25b An action according to Sections 25 and 25a may be brought by anyone who has legal interest in the matter. An action that builds upon the provisions in Sections 13, subparagraphs 1 to 3 of the first paragraph of Section 14, or the second paragraph of Section 25, may also be brought by the Patent Office.

§ 25c When both the holder and the person contesting his right agree, they may demand that a final decision of the question of the validity of the registration or the deletion of the registration be made by the Board of Appeals. A stipulated fee shall be paid for this.

When it finds that the requirements for trademark protection obviously have not been present or obviously no longer are present, the Board of Appeals may make a final decision that the registration is invalid or is to be deleted from the Trademark Register if the holder does not object. An objection from the holder must be filed with the Patent Office within three months after the Patent Office has sent the holder a notification saying that it is planning to make such a final decision and has stated the reasons for so doing.

§ 26 If there is reasonable doubt whether the holder exists, anyone may for payment of a stipulated fee request that the registration be deleted. The same applies if the holder’s address is unknown.

Before deletion after the first paragraph may be carried out, the Patent Office shall request the holder to come forward within a set time limit. Notification of the time limit shall be given in a registered letter or by other reliable means. If the holder’s address is unknown, the time limit shall be published.

If the holder has not come forward within the time limit, the registration of the trademark will be deleted.

§ 27 Where the registration of a trademark has been invalidated or a final decision has been taken to cancel or delete it, the decision shall be recorded in the Trademark Register and be published.

The same applies if the registration is not renewed or if the holder himself requests that the registration be deleted from the Trademark Register.

Chapter 4.

Special Provisions

regarding Registration of Foreigners’ Trademarks.

§ 28 If anyone not engaged in an establishment in this country applies for registration of a trademark, the applicant must prove that the mark is registered by him in his home country for the goods which the application comprises.

This shall however not apply where the home country of the applicant makes corresponding concessions in respect of applications by owners of establishments in Norway to have trademarks registered there.

Legislative Texts

§ 29 Subject to reciprocity, the King may decide that a trademark which is registered in a foreign State on more detailed conditions be registered in this country, as it is validly registered in the foreign State. Where pursuant to this provision a mark is registered which would not otherwise have been able to obtain protection in this country, the protection shall not exceed the scope or duration of the protection in the foreign State.

§ 30 The King may by regulation decide that anyone, who has filed an application for registration of a mark in a foreign State, shall within a certain time limit be able to file an application for registration of the mark in this country, with the effect that in relation to signs which others have applied to have registered or have taken into use, the application shall be deemed to have been filed in this country at the same time as the filing of the application with the foreign State.

The King issues provisions on when claims of priority according to the first paragraph must be put forward.

§ 31 If an applicant for registration of a trademark is not domiciled in this country, the person concerned shall have a representative who is domiciled in this country, who can represent him in all matters concerning the application.

If the holder of a registered trademark is not domiciled in this country, he shall have a representative who is domiciled in this country, who on his behalf can receive notifications from the Patent Office and announcements and other communications relating to legal proceedings. Regarding the proceeding of oppositions the first paragraph shall apply correspondingly for the holder.

The name and address of the representative shall be recorded in the Trademark Register.

The King may in regulations exempt foreign applicants and holders from the obligation to have a Norwegian representative.

Chapter 5.
Transfers and Licences.

§ 32 The right to a trademark may be transferred together with, or independently of, the establishment in which it is used.

If an establishment is transferred, the fight to the trademarks which are attached to it passes to the new owner, unless otherwise agreed.

§ 33 The transfer of a registered trademark shall at the request of the new holder and on payment of a stipulated fee be recorded in the Trademark Register and be published. Sections 28 and 31 apply correspondingly.

The Patent Office may refuse to record a transfer if it was not made in connection with the transfer of the establishment the mark has been attached to, and the Patent Office finds the use of the mark on the hands of the new holder to be likely to be deceptive. Such a refusal may be appealed to the Board of Appeals. Regarding the time limit for appeals etc., and the admission to bring the decisions made by the Board of Appeals before the courts of law, Section 22a applies correspondingly.

A legal action which concerns a registered trademark, may always be brought against the person registered as the holder in the Trademark Register, and notifications from the Patent Office will be sent to that person.

§ 34 The holder of a mark may give another the right to use the trademark in the course of trade (licence). A licence may relate to some or all the goods the mark is protected for, and it may relate to the use of the mark in the whole country or part of the country. A licensee can not transfer his right further to a third party unless this is agreed or must be regarded as agreed.

The holder can invoke his right to the trademark in relation to a licensee who infringes the provisions of the licensing agreement regarding the duration of the licence, in which design the mark can be used, on which goods the mark can be used, within which geographical area the licensee can use the mark, or regarding the quality of the goods which the licensee produces.

Legislative Texts

Both the holder and the licensee may request that a licence for a registered trademark on payment of a stipulated fee be recorded in the Trademark Register and be published. In the same manner it will be recorded in the Trademark Register and be published if it later is shown that the licence has expired. The Patent Office may refuse to record a licence if it finds that the licensee’s use of the mark is likely to be deceptive. Such a refusal may be appealed to the Board of Appeals. Regarding time limits for appeals etc., and the admission to bring the decisions made by the Board of Appeals before the courts of law, Section 22a applies correspondingly.

§ 35 The right to a trademark may not be subject to execution or any other separate enforcement proceedings on the part of creditors.