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17 March 2014
The total number of IP infringement cases in Norway remains relatively low. One likely reason is that the compensation awarded in such cases traditionally has been small and has been insufficient to cover the actual loss of the rights holder.
Norway has now taken steps to improve this situation, adopting legislative amendments to strengthen the enforcement of IP rights. The provisions concerning calculation of damages represent the most fundamental change in this regard. The amendments cover all IP rights laws with the exception of copyright.
Norway is not an EU member and is therefore not obliged to implement the EU IP Rights Enforcement Directive (2004/48/EC). However, the recent changes will bring Norway closer into line with the European Union, although the systems are still not identical.
The most important changes are summarised below.
The legislative changes that should have the greatest impact on the protection of IP rights are the changes in the rules on the calculation of compensation. Traditionally, the calculation of compensation for IP rights infringement has been uncertain and often resulted in relatively small awards. The rules for calculation have now been standardised and will strengthen the right to compensation and damages.
In the case of intentional or negligent infringement, the rights holder can claim compensation and damages based on the most favourable of three grounds:
Further, if the infringer acts intentionally or with gross negligence, the rights holder may instead claim compensation of twice the amount of a reasonable licensing fee or royalty.
The rules concerning calculation of damages also cover infringements of the provisions in the Marketing Control Act on lookalikes, trade secrets and technical aids (with the exception of the provision on twice the amount of a reasonable fee).
IP infringements have been punishable for a long time in Norway. However, the exception of infringements against trademarks and integrated circuit rights in certain aggravating circumstances, the maximum prison sentence has been only three months, resulting in few charges against IP infringers. In an attempt to improve the situation, the maximum sentences for infringements have now been raised to imprisonment for up to one year in normal cases and up to three years in particularly aggravated cases.
The ability to pronounce sentence for a prohibitive judgment has been statutory for all types of IP infringement. The same applies to the ability to order preventive measures, such as removal and destruction of infringing goods, materials and tools; and the right to publish information about judgments at the infringer's cost.
The new provisions also ensure that rights holders have access to more information than before, meaning that anyone that, in various ways, has been involved with the object of infringement may be ordered to provide information about the origin and distribution systems or network of infringing or allegedly infringing products. These rules will make it easier for rights holders to identify and pursue infringers, and will be especially important for detection and prosecution of the various elements involved in comprehensive and systematic infringement of rights. Information may be required in connection with an infringement lawsuit and in separate cases independently of such proceedings.
Previously, the Oslo District Court had exclusive jurisdiction in invalidity cases concerning patents, registered trademarks, designs and plant breeders' rights. However, cases only concerning infringement (ie, cases where the defendant does not challenge the validity of the IP right) have been heard by the ordinary district courts. The recent amendments ensure that the Oslo District Court will now have exclusive jurisdiction in all cases concerning registerable IP rights. However, this will not affect preliminary injunction actions.
The timeframe for customs detention of goods suspected of infringement of IP rights has been extended from five days to 10 days. The provisions on detention of goods also include certain cases of violations of rights under the Marketing Control Act – Sections 30, 25 and 26.
In cases where an injunction has been granted, the goods will be detained according to the injunction. The court may grant injunctions even if the recipient or its representative is unknown.
Effective enforcement measures are crucial to secure strong protection of IP rights, and the recent changes will give rights holders a greater incentive to take action. However, it remains to been seen whether contentious activity will increase as a result of the new legislation, or whether the intended preventive effect will lead to a decrease in IP infringements.
For further information on this topic please contact Kristine S Snyder at Bryn Aarflot AS by telephone (+47 46 90 30 00) or by fax (+47 22 00 31 31) or by email (email@example.com). The Bryn Aarflot AS website can be accessed at www.baa.no.
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