Trademark

BAA offers general consultancy services as well as specialist legal services relating to all aspects of Norwegian trademark law and practice.

Examples of our trademark-related services are:

Legal assistance and consulting services in all trademark related matters in Norway
Advice and assistance regarding protection of trademarks and trademark portfolios in Norway
Assessment and assistance in trademark infringement matters in Norway
Litigation in trademark and other IP-related matters in Norway
Filing and prosecution of trademark applications in Norway and abroad
Prosecution of provisional refusals in Norway (Madrid Protocol/international trademark registrations)
Assistance in trademark opposition cases before The Norwegian Industrial Property Office (NIPO)
Trademark renewals in Norway and abroad
Customized and standardized trademark availability searches
Monitoring of trademarks
In-use searches
Assistance and advice relating to the assignment or licensing of trademark rights

We also offer customized services based on each particular client’s individual needs.

Trademark application requirements

In order to file a trademark application in Norway, we require:

Contact information details of the applicant; name, address, telephone no., fax no. and e-mail address
Reproduction of mark (electronically by e-mail, or six specimens not exceeding 8 x 8 cm in size)
Priority details (if priority is claimed)

The following information and documents can be submitted subsequent to the application date:

Power of Attorney (signed by the applicant). Power of Attorney forms can be downloaded from our website (cf. "forms")
Specification of goods/services. Please note that The Norwegian Industrial Property Office (NIPO) accepts class headings. Further, partial priority can be claimed from a narrower foreign application.
Certified copies of priority documents are seldom requested, and can be obtained and filed subject to the Patent and Trademark Office’s request.

Normal procedure and expected time lapse

Once a trademark application has been filed, it will normally take from 4 to 6 months before a response can be expected from The Norwegian Industrial Property Office (NIPO). If no objections or citations are made, the mark will be published in the Norwegian Gazette. The deadline for third party oppositions is two months from the date of publication.

Madrid Protocol or Norwegian national application?

Filing trademark applications via the Madrid Protocol is cost efficient and labour-saving for trademark owners who do not have their own legal department administering their trademark portfolio.

However, there are definite disadvantages in filing Madrid Protocol applications compared to filing national applications.

For instance, The Norwegian Industrial Property Office (NIPO) accepts broad specifications of goods and services under a local trademark application (e.g. class headings). There are no requirements relating to “intent to use” in Norway.

Many other countries allow only a narrow specification of goods, due to for example “intent to use” restrictions. Since applications filed under the Madrid Protocol cannot be filed for a broader scope of goods than the home application, limitations that do not apply to Norwegian national applications are imposed in regard to the specification of goods, and the protection claimed.

When filing a national application in Norway, Convention priority can be claimed from a corresponding foreign application for goods comprised by the latter, but the goods comprised by the Norwegian application are not restricted by the priority claim. A foreign applicant can file for a broader specification of goods, claiming partial priority for the goods comprised by the foreign application.

Any national application or Norwegian designation of an international registration can be sought cancelled by third parties for goods/services for which the mark has not been used in Norway for a consecutive period of five years from the Norwegian registration date.

Another drawback of an international registration is that the status of in each designated country is often difficult to monitor, since not all national examination offices issue notices of allowance, etc. in such applications. In many countries, the applicant will therefore be required to await the 18 month grant deadline of each national examination office before it can be confirmed whether protection has been granted or not. In some countries, such as Sweden, the applicant will usually be notified before the expiration of the 18 month deadline that opposition can even be filed after the 18 month deadline.

The most important drawback of an International application is nevertheless the risk of “central attack”, meaning that the validity of the entire registration (all designated countries) is dependant on the home registration to become registered and remain valid for five years. Before filing an international registration, we therefore strongly recommend conducting thorough availability searches in the home registration country, ensuring that the home application will be granted registration and that the risk of cancellation of same by third parties is minimal.

Finally, there are significant advantages in being represented by local counsel, attending to maintenance of the client’s trademark portfolio in the relevant country, and receiving all communications relating to the relevant trademark registration(s).

Provisional refusals (Madrid Protocol applications)

When an international trademark registration designating Norway becomes subject to a provisional refusal, the applicant is granted a three month term for filing a response to the refusal. A response must be filed in Norwegian, via Norwegian counsel.

In order to undertake responsibility for the prosecution of a Norwegian designation under the Madrid Protocol, we require a Power of Attorney, simply signed by the applicant. The Power of Attorney must be filed with The Norwegian Industrial Property Office (NIPO). Our Power of Attorney form can be downloaded from our website (cf. "forms").

Validity period – renewal

A Norwegian trademark registration is valid for ten years from the date of registration. There is a grace period of six months after the renewal deadline, during which a registration can be renewed by paying an additional fee.

International trademark registrations (Madrid Protocol) are valid for ten years from the international registration date.

A trademark registration can be renewed an unlimited amount of times, for periods of ten years at a time.

Recordal of changes (assignment, merger, change of name or address)

The NIPO does not request documentation or declarations in order to record changes in a trademark application/registration, such as assignments and mergers, and changes of name or address. In order to request recordal of assignment and mergers, we need only a signed power of attorney from the new owner. A power of attorney form can be downloded from our website, and is available under the "Forms" tab.

For recordal of changes in name/address, no documentation is required.

Please note, however, that we do normally recommend submission of documentation of changes in order to secure notoriety and publicity concerning the chain of tittle.

Recordal of licence agreement

Recordal of license agreements against a Norwegian trademark registration is not compulsory, but highly recommended in order to maintain the licensee’s and licensor’s interests in the mark.

A recorded licensee has the statutory right to be informed by third parties filing cancellation actions against the relevant trademark registration.

Do not hesitate to contact our consultants for more information.