Enforcement of IP rights to be more in line with IP Rights Enforcement Directive

The Norwegian laws on recordable IP rights, such as patents, trademarks and designs are to be amended in order to improve the enforcement of such rights against potential infringers. The Norwegian Disputes Act will also be amended. The amendments will have an impact on violations under the Marketing Practices Act, which could prove to be vital for many rights owners. However, the changes will not affect the copyright legislation.

An important reason for the strengthening of the legislation is the problem arising from hazardous pirated products, especially within the pharmaceutical industry. Even though Norway is not a member of the European Union, and has thus no obligation to implement the IP Rights Enforcement Directive (2004/48/EC), many similar problems need to be dealt with in Norway.

The proposal for amendments was heard at the Storting (the Norwegian parliament) on April 29 2013 and resulted in Enactment 53 (2012-2013). The enactment means that the enforcement of IP rights in Norway will be more in line with the solutions set forth in the directive, but not identical. The amendments will come into effect on July 1 2013.

The main object of the proposed changes to the Norwegian legislation on the enforcement of IP rights concerns the principles applying to the calculation and award of damages for infringement – for example, a IP rights infringer is likely to pay a higher amount than was previously the case. If the infringer was negligent, the IP rights owner will have the right to choose between the following bases for calculating and awarding damages:

• a compensation equal to a reasonable licence fee, as well as compensation for the damage caused by the infringement (which would not have occurred if the infringer had obtained a license for the IP rights);
• the IP rights owner's financial loss (typically, lost profits) caused by the infringement; and
• a compensation equal to the infringer's profits resulting from the infringement.

If there is gross negligence or wilfulness on the part of the infringer, the IP rights owner will have, as a further option, the right to claim a ‘double licence fee’. This ‘double licence fee’ approach is unprecedented in Norwegian law. 

It is expected that the changes will make enforcement of IP rights more efficient, especially where it is difficult for the rights owner to substantiate its loss.

The amendments in the Disputes Act will give IP rights owners the right to obtain information regarding the origin and distribution network of the allegedly infringing goods. They will also apply to cases of copyright infringement.

Where there is a reason to believe that an IP right has been infringed, the court may, upon request by the rights owner, order the infringer to provide information as to the infringing product's origin and the infringer's distribution network for the infringing product or service. Such information includes:

• the name and address of the manufacturers, distributors, suppliers and other parties that have had the infringing products in their possession, or have delivered or received the services;
• the name and address of the potential wholesalers and retailers; and
• the quantity of products or services, their delivery and receipt, as well as the price paid for them.

Third parties with a connection to the infringement may also be ordered by the court to provide information.

Finally, under the current provisions of the acts on recordable IP rights, the Oslo District Court has exclusive jurisdiction in invalidity cases, and in cases concerning the judicial review of decisions of the Norwegian Board of Appeal for Industrial Property Rights:

• refusing to register a trademark or design or refusing to grant a patent or a plant breeder right;
• in administrative re-examination cases; and
• in cases involving compulsory licences.

‘Pure’ infringement cases, however, are heard by the ordinary district courts (normally by the court having jurisdiction where the infringer has its place of business).

Thus, infringement and invalidity actions regarding the same trademark, design or patent are sometimes heard in different courts, if they are not consolidated and heard jointly in Oslo.

In order to make the court proceedings more efficient, the amendments provide that the Oslo District Court shall henceforth have exclusive jurisdiction in all cases concerning recordable rights. However, preliminary injunctions will still have to be filed in the court where the infringer has its place of business.

Stalling tactics will be less of an option, as defendants will be prevented from interrupting an infringement case by filing an invalidity action in the final phase before the hearing of the case. In addition, the timeline from writ to trial in combined infringement and invalidity cases will be expedited, as there will be no need to transfer infringement cases to Oslo and consolidate the cases before the Oslo court.

Amund Brede Svendsen and Thomas Hagen, Advokatfirmaet Grette DA, Oslo