Upcoming changes to The Norwegian Trademark Act
Topics
Intellectual property rights
The Norwegian Trademark Act (Nw. Varemerkeloven) is being amended to harmonize with the EU Trademark Directive (2015/2436/EC), with changes taking effect 1 March 2023. We have summarized some important changes below:
- Trademarks registered in black and white will no longer receive protection for all colors. Instead, protection will be limited to the colors represented in the application. Already registered trademarks and trademark applications filed prior to 1 March will, however, not be affected.
- Graphical representation will no longer be a requirement for registration. According to the upcoming amendments, it is sufficient that the sign is represented in a manner which enables the competent authorities and the public to determine the “clear and precise” subject matter of protection. This will allow for registration of trademarks that are difficult to represent graphically, such as sounds, holograms and three-dimensional figures.
- New amendments will clarify that protected geographical indications are excluded from registration. Protection will be excluded both for wine and spirits protected under relevant EU-regulations, and protected designations under the Norwegian Protected Designation Scheme and Regulation No. 698 of 5 July 2002 concerning the protected designation of origin, geographical indication and traditional specialities of foodstuffs.
- Further, protection will be excluded for trademarks that consist of, or reproduce in their essential elements, plant varieties protected by plant breeders’ rights under national legislation or international agreements to which Norway is a party. Note that plant variety denominations may still also be considered non-registrable due to their descriptiveness or liability to deceive under the Trademark Act section 14 and 15 (1) letter b.
- Following amendments in both the Trademark Act and the Norwegian Mortgage Act (Nw. “Panteloven”), trademarks, and trademark applications, may be given as security independent of the undertaking. The amendments will enable security rights in trademarks to be separated from the rest of the business’ assets, which has previously not been permitted under Norwegian law.
- Registration of a trademark in bad faith will become an absolute ground for refusal under the Trademark Act section 15. In this context, “bad faith” refers primarily to whether the submission of an application is considered unfair and conflicts with good business practice among traders. Instances where someone, in contrary to good business practice, seeks to register a trademark that they are aware that someone else is already using as their distinctive mark, will be in the core of this ground for refusal.
- The standard application and renewal fees of the Norwegian Industrial Office will only include goods or services in one class. An additional fee will apply per extra class beyond one.
If you have any questions regarding the upcoming amendments to the Trademark Act, or questions relating to trademark protection in general, do not hesitate to contact us at Haavind.
