The essentials of filing a trademark in Norway

Main points about the essentials of filing a trademark in Norway:

• Tips and tricks

Tips and tricks for trademark registration in Norway

• Norway is not a member of the European Union, and consequently is not covered by an EUIPO trademark application

• To secure your clients trademark rights in Norway it is necessary to file a separate trademark application in Norway

• Filing can be done either through WIPO or a Norwegian agent

• When filing an application through a Norwegian agent the normal processing time for NIPO is three to five months

• When filing a word + device mark in Norway we recommend that this mark is filed in black and white colours. The current practice in Norway grants marks filed in black and white protection for all colours

• It is possible when filing, to request "fast track". This is a little known possibility. If your client need rapid clarification regarding its trademark rights in Norway it should be applied for "fast track"

• The processing time when "fast track" is granted is normally two to four weeks

• NIPO will assess and either grant or refuse the fast track application. It is our experience that NIPO lately have granted fast track more often than not, and it should be possible to achieve fast track if needed.

• When filing the application the only things that is needed is the list of goods and the applicants' information

• The POA is not needed at the time of filing (can be sent to NIPO later), and there is no need for an original signed POA. A scanned copy signed by the client and then sent by email to the agent, is sufficient.

• Should the Norwegian Industrial Property Office (NIPO) reject the application, a Norwegian agent is needed to respond to the refusal from NIPO.

• It is our experience that NIPO is strict when it comes to assessing distinctiveness in trademarks. This also relates to English words and phrases. If your client is in doubt about filing a word mark or a device + word mark, the fact that NIPO is regarded as strict should be taken into account.

• Unlike EUIPO, NIPO evaluates if there is risk of confusion between the application and other previously registered marks. If NIPO finds that there is such risk, the application will be rejected and the applicant is given a right of to argue against the rejection.

• If NIPO rejects the application it will grant a deadline of 3 months from the date of NIPOs letter to respond to the refusal. If the deadline is not met, the application will be considered dead

• This deadline can be prolonged if needed. The first two requests for prolonging of the deadline will be granted by NIPO. Further extensions can also be achieved, but this requires a valid reason, and NIPO have the possibility to ask for documentation
• Negotiations regarding co-existence and letter of consent are accepted as a valid reason by NIPO.

• Co-existence/letter of consent is accepted by NIPO. This can be used to overcome refusals on the grounds of risk of confusion between similar marks.

Please do not hesitate to contact us if you have any questions or are in need of assistance related to filing trademarks in Norway.

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