Health, safety and environmental regulations are not a major consideration for most producers of counterfeit toys, vehicle parts, clothing, electronics and medicines. Despite this, Norwegian consumers seem happy to buy fake goods instead of genuine products. However, the latest legislative amendments are important steps towards strengthening the enforcement of IP and related rights.
The Court of Appeal recently ruled that the removal of barcodes on goods that are legitimately parallel imported did not qualify as a 'legitimate interest' which a rights holder could assert. The court concluded that barcodes are an effective weapon in the fight against counterfeiting; however, in this particular case, the barcodes included information that could be used to prevent parallel imports.
Norway has adopted legislative amendments to strengthen the enforcement of all IP rights laws. Specifically, changes have been made to the provisions concerning the calculation of damages, preventative measures, the right to information, injunctions and jurisdictional rights. The changes will bring Norway closer into line with the European Union.
The Norwegian IP Appeal Board has issued a decision relating to a trademark registration for the mark ALFRED NOBEL. The Nobel Foundation had filed an invalidity claim against the registration on the grounds that use of the mark on Class 32 goods would deceive the public into believing that by purchasing the goods, they were supporting peace-keeping or charity work.
In Norway, consent declarations are widely used and relied on in the world of trademarks. A recent European Court of Justice decision seems to have shaken the foundations of the consent regime commonly accepted under Norwegian practice. The ruling will inevitably increase the conflict level under Norwegian trademark law and prevent otherwise sound and flexible amicable consent arrangements.
The Committee of Unfair Competition recently found that the purchase and use of a competitor's trademark as a Google AdWord was in breach of good business practice. The committee stressed that the goodwill in a trademark is what causes the internet user to use the term as a search term in the first place, and unauthorised use of such mark takes unfair advantage of the owner's reputation and efforts.
According to Section 13 of the Patents Act, any amendments to a patent application must be supported by the application as filed. The latest version of the patent guidelines stipulates that it is possible to delete certain embodiments, provided that these are found as alternatives in the original claims or as alternatives specifically mentioned in the description.
While the ONEL/OMEL decision of the European Court of Justice has led to discussions on the geographical scope of use of a registered Community trademark, the Norwegian Industrial Property Office Board of Appeal has issued a decision referring to the quantitative requirements underlying the 'genuine use' criterion. The decision appears to raise the bar for proving genuine use, at least for consumer goods.
A 2012 customer satisfaction survey carried out by the Norwegian Industrial Property Office (NIPO) revealed significant concerns over the lack of harmonisation in the area of distinctiveness. In response, NIPO has presented some of the work it has done and is doing in an attempt to improve the quality of its trademark application processing. So is harmonisation in sight?
It is settled administrative practice that there is at least an average degree of similarity between a product in Classes 1 to 34 and sales services in Class 35 (wholesale or retail) relating to the same goods. The Norwegian Industrial Property Office Re-examination Division recently considered whether this practice has any bearing on the related assessment of whether use requirements were met for the goods covered by a registration.
The Supreme Court recently held that Stokke's Tripp Trapp chair, which is designed to be adjusted as children grow, is protected under the Copyright Act, and that Trumf's Oliver chair infringed these rights. The decision has caused concern as it means that a design which was originally patented until 1992 may now remain protected for 70 years after the designer's death.
Under the EEA Agreement, the trademark authorities must implement the same requirements of distinctiveness as EU member states. However, Norway seems to have failed in this, as the standards applied are stricter than those in most other jurisdictions. To remedy this, trademark holders would be well advised to file for the application of a non-registrable mark in combination with a distinctive house mark or logo.
A new act governing the Norwegian Industrial Property Office will come into force on January 1 2013. Among other things, the act implements changes to both the organisation of the Board of Appeal and oral procedures, and allows legal costs to be awarded during administrative review.
The period of opposition against a granted patent in Norway is nine months. However, after the expiration of the opposition period, a lifelong opportunity for third parties to request an administrative review of a granted patent before the Norwegian Industrial Property Office (NIPO) exists. A request for an administrative review may be made for any Norwegian patent, whether granted by the NIPO or a European patent validated in Norway.
An agreement on the Patent Prosecution Highway has been reached between the Norwegian Industrial Property Office and the US Patent and Trademark Office (USPTO). The agreement provides applicants with the opportunity to request accelerated patent prosecution of a patent application at the Norwegian Industrial Property Office on the basis of claims found patentable by the USPTO and vice versa.
Two recent decisions of the European Court of Justice have initiated a new practice in Norway related to supplementary protection certificates (SPCs) for medicinal products containing a combination of active ingredients – so-called 'combination products'. An SPC increases the duration of protection for certain patented products, extending the patentee's monopoly in respect of that product.
The Court of Appeal recently ruled that the 'Oliver' children's chair produced by Trumf AS infringed Stokke AS's copyright in the well-known Tripp Trapp chair. The court also found that Trumf's use of the slogan, "This great children's chair will grow with your child" infringed Stokke's own trademarked slogan, "The chair that grows with your child".