Proposed amendments seek to strengthen enforcement of IP rights

In April 2011, in an effort to further encourage commercial activities based on IP rights, the Norwegian Ministry of Justice issued a proposal which aims to strengthen the enforcement of industrial property rights (ie, trademark, patent, design, plant variety and integrated circuit design rights) in Norway, and would imply a substantial degree of harmonisation between the Norwegian legislation on the enforcement of IP rights and the EU IP Rights Enforcement Directive (2004/48/EC). The proposal not only aims to bring enforcement in Norway into line with the minimum requirements set forth by the directive, it goes beyond these requirements in several respects.
The deadline for submitting written submissions regarding the proposal expired on September 30 2011. Overall the response has been positive, indicating that the Norwegian IP community supports the strengthening of the enforcement of IP rights proposed by the ministry.
The most fundamental amendment under the proposal relates to the calculation of damages, and is based on the acknowledgement that the calculation methods currently applied in Norway to compensate IP rights owners are insufficient. Furthermore, the proposal is based on the assumption that there has been a significant increase in infringing activities in recent years - including the growth of business concepts based entirely on the infringement of IP rights, which necessitates the introduction of further preventive measures. The ministry has thus proposed the implementation of a new damage calculation system which differentiates between infringement due to negligence on the one hand, and infringement due to gross negligence or wilful infringement on the other. Under the proposal, in the case of negligent infringement, the trademark owner will be entitled to choose between the payment of:
  • a reasonable licence fee;
  • a sum equivalent to the trademark owner’s financial loss; or
  • a sum equivalent to the profits generated by the infringer due to the infringement.
While these options are already mandatory under Article 13 of the Enforcement Directive, the ministry has proposed to introduce a rather novel and unique approach in cases involving gross negligence or wilful infringement: the trademark holder will have the option to claim double the licence fees.
In addition, the proposal clarifies that liability will apply from the application date of the infringed IP right. This implies that the legal position of trademark owners will improve compared to the current situation.
Another noteworthy amendment is the proposed clarification of the ‘right to information’, moulded on Article 8 of the Enforcement Directive, which ensures that trademark owners have access to information on the origin and distribution systems or networks of infringing or allegedly infringing products. While such information may already be available to a significant degree under the current law, the legal assessments involved are rather complicated and require the application of several provisions of the Norwegian Civil Procedure Code. Therefore, the regulation of the right to information of IP rights holders in a separate chapter of the Civil Procedure Code would be welcomed by trademark owners.
Another notable amendment is the de facto implementation of Article 15 of the Enforcement Directive, which enables the courts to order appropriate measures for the dissemination of information in cases involving the infringement of IP rights. This amendment may be of significant importance for trademark owners, as it may help them to counter or reduce the long-lasting negative effects of trademark infringement, such as market confusion, or even the tarnishing or blurring of reputable trademarks.   
Vincent Tsang and Felix Reimers, Advokatfirmaet Grette DA, Oslo

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