Litigation procedures and strategies: Norway

By Mikkel Lassen Ellingsen and Håkon Tysnes Kaasin, Bryn Aarflot AS

Legislative framework and causes of action

The most relevant legislation relating to trademarks is the Trademark Act (2010/8), implementing the EU Trademarks Directive (2008/95/EC), which applies to Norway as a party to the EEA Agreement (despite Norway not being a part of the European Union). Norwegian legislators are currently working on amendments to bring the Trademark Act into line with the 2015 EU Trademarks Directive (2015/2436).

The Trademark Act regulates registration, administrative opposition, cancellation and invalidation proceedings, which are handled by the Norwegian Industrial Property Office (NIPO). Decisions issued by the NIPO can be appealed to the independent IP Appeal Board. In certain circumstances these decisions can then be appealed to a regular court of first instance.

In cases where the IP Appeal Board’s decisions are brought before a regular court, the formal counterparty in the proceedings is the IP Appeal Board, represented by the attorney general. In opposition matters, the original opponent will thus not formally be a party to the proceedings, but can act as an intervener on the attorney general’s side.

Cancellation and invalidation claims can also be brought directly before the regular courts, after which the court procedure is governed by the Civil Procedures Act (2005/90). The regular courts have sole jurisdiction over infringement claims, injunctions and claims for damages, and thus no administrative dispute resolution alternative exists for these matters.

Under Norwegian trademark legislation, trademark rights can be acquired through either registration or use. While the bar is set quite high for evidencing use-acquired trademark rights, owners of unregistered trademark rights are afforded the same courses of action as proprietors holding registration certificates from the NIPO.

Alternative dispute resolution

In addition to the above institutions (the NIPO and the courts), a few alternative dispute resolution procedures are worth mentioning.

Court mediation

Norwegian courts are obliged to encourage the parties in trademark litigation matters (and other matters susceptible to settlement) to consider court mediation with the aim of amicable settlement. However, the parties remain free to oppose mediation if they deem it inappropriate or superfluous in the circumstances.

If the parties agree to court mediation, a trained judge will be appointed as mediator. The parties are free to bring their attorneys, but a representative of each party must be present during the mediation. The judge/mediator will guide and instruct the negotiations between the parties (both separately and in the same room), with the aim of reaching an amicable settlement. If the court mediation proves unsuccessful, the matter will proceed to a regular court trial. The judge who acted as mediator will be removed from the case, and a different judge will take over.

Arbitration

In Norway, as in the other Nordic countries, arbitration is available as an alternative to the regular courts in trademark dispute matters. However, in practice arbitration is seldom used in such matters. One reason for this is that the legal costs for regular court proceedings are relatively low in Norway, with an efficient and straightforward process (as described in detail below).

Another reason is that an arbitral award will only be valid inter partes. Arbitration may therefore be used in infringement cases, but it is highly unlikely that the NIPO will consider itself bound by an arbitration decision concerning the validity of a registration, making arbitration a less attractive option in such matters.

The situation might be different if the arbitral award obliges one party to cancel its own registration due to invalidity. However, no examples of this impractical outcome are known.

The Arbitration Act (2004/25), as amended, implements the 1958 New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards. A party may choose between the International Chamber of Commerce, the Arbitration and Dispute Resolution Institute of the Oslo Chamber of Commerce or other international tribunals. However, the most commonly used form of arbitration in Norway is ad hoc arbitration where the parties establish the arbitration tribunal based on the arbitration clause. This practice differs from that of most other countries, where institutional arbitration is the norm.

Litigation venue and formats

The Oslo City Court has exclusive jurisdiction over matters concerning cancellation, invalidation, registration and infringement of trademarks (as well as several other areas of IP law). The Oslo City Court is also the compulsory legal venue for appeals of decisions issued by the IP Appeal Board.

While the Oslo City Court is not a specialised IP court (and thus hears cases in all other civil and criminal legal fields as well), each department within the court has at least one appointed IP judge who has undergone special IP training. Civil procedures are heard by one judge, but expert judges (usually members of a relevant industry or experts in a technical field) may be appointed on the parties’ request in complex and comprehensive matters. This does not generally happen in trademark matters, but rather in patent cases.

The court proceedings include a written preparation stage, initiated by filing a writ of summons. The court grants the defendant three to four weeks to file a defence plea, after which the parties are free to file several additional pleadings if necessary. Early in the preparation stage the court will summon the parties’ attorneys to a brief meeting (usually conducted by telephone), with the aim of mapping out the remainder of the preparation stage and scheduling a date for the second stage of the proceedings: the oral hearing.

The Oslo City Court aims to schedule the oral hearing within six months of the filing of the writ of summons, but will remain flexible and sensitive to the attorneys’ opinions of each case’s complexity and existing schedules. Once the oral hearing has been scheduled, the court will also set a deadline for the parties to submit all necessary evidence and written pleadings, at least two weeks ahead of the hearing, but usually (and preferably) even sooner.

The Norwegian court system is built on the principle of orality, which tends to make the oral hearings somewhat tedious. The judge will not have read the pleadings ahead of the hearing, and may not base his or her decision on any other evidence than what is documented and reviewed during the oral hearing. In most trademark matters, one or two seven-hour days are scheduled for the oral hearing, but in cases involving extensive evidence examination – typically in cases regarding use-acquired rights – the hearing may take a full week or longer.

The court’s decision is usually issued two to four weeks after the oral hearing. On average, trademark litigation proceedings before the first-instance court in Norway take approximately seven to 12 months.

Unfortunately, the Court of Appeal is not so efficient, and it may take up to two years for a hearing in an appeal case to be scheduled.

Damages and remedies

Compensation and damages

The Trademark Act renders any party committing trademark infringement (and accessories thereto) liable for whichever of the following options is most favourable to the infringed trademark owner:

  • reasonable compensation for the use of the trademark (typically a fair licence fee);
  • damages for injury caused to the infringed trademark and its owner; or
  • compensation amounting to the infringer’s ill-gotten profits.

In matters where the infringement is committed intentionally or with gross negligence, the Trademark Act allows for compensation claims equivalent to double the amount of a fair licence fee.

While the legal framework should allow for effective enforcement in relation to compensation and damages, the amounts awarded by Norwegian courts in trademark infringement matters are usually quite moderate. With the exception of the above example of doubling the fair licence fee, no punitive damages are awarded. In accordance with the general legal principles for damages in Norway, one can seek compensation only for actual economic loss and the loss must be documented or at least proven on a balance of probabilities.

Norwegian courts, like those of most other jurisdictions, generally award the winning party its full legal costs.

Injunctions

Injunctions are quite efficient tools in trademark infringement matters in Norway. Under the Trademark Act, the courts are entitled to prohibit an infringer (or an accessory) from repeating the infringement. The same applies to a third party that has made substantial preparations for committing an infringement, or acted in a manner that gives particular reason to suspect future trademark infringement.

Preliminary injunctions are available in matters where the rights holder can render probable that:

  • the trademark has been infringed; and
  • a preliminary injunction is necessary to avoid:
    • complications in the subsequent prosecution of the claim; or
    • substantial damage caused by the infringing action, before the main claim has been decided in regular court proceedings.

On receipt of a request for preliminary injunction, the Oslo City Court will summon the defendant and schedule an oral hearing as soon as possible (usually within a few weeks). However, the court may issue an ex parte interim injunction in matters of particular urgency or where the purpose of the preliminary injunction would be lost if the infringer were notified in advance. If a preliminary injunction is issued ex parte, the defendant can request a subsequent oral hearing, which will result in a new decision replacing the decision granted ex parte.

When issuing a preliminary injunction in a trademark infringement matter, the court will set a deadline (usually within six weeks to six months) for the plaintiff to initiate a regular infringement lawsuit.

The courts will often condition a preliminary injunction on the plaintiff arranging for a security deposit to cover any injury or inconvenience inflicted on the defendant as a result of the injunction.

Penal sanctions

The Trademark Act also warrants penal sanctions (ie, penalties or up to three years’ imprisonment) for trademark infringement under aggravating circumstances. However, the provision is rarely (if ever) employed by the courts.

Evidencing the case

In any civil case before the Norwegian courts the burden of proof lies on the parties to prove the facts and circumstances on which they base their claims. Hence, the responsibility of submitting relevant evidence – and informing the court of any witnesses and their testimonies – lies on the parties during the preparation stage of the proceedings.

Due to the above mentioned principle of orality in Norwegian courts, the judge may base his or her decision only on the evidence and testimony presented during the actual oral hearing, which requires each party orally to present and review each piece of evidence considered relevant to the case.

In an important exception to the above principle, the onus of proof is reversed in cancellations based on alleged insufficient trademark use. In these matters, the owner of the challenged mark must prove that there has been genuine and actual use of the trademark in Norway during the last five years.

Each party can request exclusion of evidence that is deemed to be irrelevant or too comprehensive in proportionality to the case, among other things. The court may even exclude evidence on its own initiative on the same grounds.

Although there is no discovery process in Norway, each party (or the court on its own initiative) may request access to relevant documents, files or objects that it believes the other party (or a third party) possesses.

Survey evidence

Surveys are certainly admissible under Norwegian procedural legislation, and consumer surveys are often submitted in matters concerning:

  • the validity or cancellation of trademarks;
  • alleged use-acquired rights; or
  • allegedly well-known or famous trademarks.

The relevance and weight of these surveys largely depend on the statistical method employed, and it is not unusual for the parties to spend some time arguing this issue before the court. There have been several decisions over the last 10 to 12 years in which such surveys have been important, or even decisive, to the court’s decision.

Expert witnesses

The parties, or the court on its own initiative, may appoint expert witnesses to testify on specific non-legal issues or on fields which require expert knowledge (eg, the statistical and empirical method employed in a consumer survey). Special procedural rules apply for court-appointed expert witnesses, but expert witnesses that are called by the parties (as is usually the case in trademark matters) will usually give testimony and be subjected to cross-examination like any other witness.

Available defences

Despite the obvious arguments that the marks in question are not confusingly similar, there are certain other ways to defend against an infringement claim. For example, a trademark owner is not entitled to prohibit third parties from using:

  • its trademark outside of commercial activity;
  • their own name and address;
  • marks which are deemed devoid of distinctive character or descriptive of the relevant goods or services; or
  • its trademark in a loyal fashion, if it is deemed necessary for identifying or referring to goods or services (eg, when trademark use is considered necessary to indicate the intended purpose of a product as a compatible accessory or spare part).

In addition, the defendant may file a counterclaim for invalidation or cancellation of the plaintiff’s trademark. A trademark becomes vulnerable to cancellation on the basis of non-use five years after the mark is published in the national trademark gazette (or five years from the date on which the mark is upheld after an opposition, if later).

Finally, passivity/acquiescence is another available defence in trademark infringement matters. While there is no set minimum period of time in Norwegian trademark legislation, the regular principles of passivity apply to trademark matters, implying that one may put up a successful defence against an infringement claim if the plaintiff has knowingly tolerated the trademark use for a long period.

Appeals process

A decision of the Oslo City Court can be appealed to the Court of Appeal. For all practical purposes, the appeal case will follow the same procedural rules as in the first instance, but will be heard by a panel of three judges (with the addition of one or two expert judges in certain cases). It is worth noting that the parties may introduce certain related claims or new evidence before the Court of Appeal. The appeal case is thus not merely a review of the Oslo City Court’s decision, although it must be based on the prior decision.

A further appeal would be to the Supreme Court. The Supreme Court admits only appealed cases with some principal or fundamental significance beyond the case at hand (on average, some 15% to 20% of the total appealed cases, although the chances of IP-related cases being accepted are actually significantly better). However, it has ruled on several trademark matters in the last five to 10 years, including cases concerning infringement, distinctiveness and even the assessment of the similarity of goods and services.

Bryn Aarflot AS

Stortingsgata 8

PO Box 449 Sentrum

Oslo NO-0104

Norway

Tel +47 46 90 30 00

Fax +47 22 00 31 31

Web www.baa.no

Mikkel Lassen Ellingsen
Attorney at law
mle@baa.no

Mikkel Lassen Ellingsen is a part of Bryn Aarflot’s litigation team, and has represented Norwegian and foreign clients of all sizes in litigation matters concerning trademarks, designs, copyright, patents and unfair competition.

Mr Lassen Ellingsen is also involved in general and strategic trademark counselling, developing and implementing trademark protection strategies, clearance, filing and prosecution, as well as trademark oppositions and other administrative procedures, domain name issues, negotiation and drafting of trademark, copyright and domain name-related agreements, anti-counterfeiting and customs matters in Norway and abroad.

Mr Lassen Ellingsen is a 2015 law graduate from the University of Oslo, where he specialised in trademark, patent and copyright law. He wrote his master thesis on use-acquired trademark rights.

Håkon Tysnes Kaasin
Attorney at law
htk@baa.no

Håkon Tysnes Kaasin focuses primarily on IP litigation work and on providing general legal advice on IP-related matters. He has extensive experience in business law from working in-house as a managing attorney in a large international company for several years, focusing particularly on IP law, including trademark and patent portfolio development and management, IP licensing, cooperation and development agreements, data protection and privacy, unfair competition and marketing law. Mr Tysnes Kaasin is well versed in handling IP disputes and international contract negotiations, both inbound and outbound.

He also has broad experience in IP counselling, including developing and implementing IP rights protection strategies, trademark clearance, filing and prosecution, trademark oppositions and other administrative procedures and domain name issues.

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