Trademark law reform enacted
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On March 11 2010 the Norwegian Parliament passed the bill on the new Trademarks Act. The act will enter into force no later than July 1 2010.
The Trademarks Act 2010 modernizes the current legislation and clarifies certain issues. However, from the point of view of substantive law, little will change.
From a legislative standpoint, Norwegian trademark legislation will become aligned with the Designs Act 2003. The trademark legislation will also be in line with the Singapore Treaty on the Law of Trademarks, to which Norway intends to accede. More detailed provisions will be available when the Ministry of Justice has prepared and published the Trademarks Regulations.
The most significant provisions introduced by the new act are as follows:
- Original products from markets outside the European Economic Area (ie, Norway, Iceland, Liechtenstein and the EU member states) will no longer be capable of being imported into Norway without the trademark owner’s consent. This extends the principle of regional exhaustion to Norway.
- Courts will have the power to order a party to cancel a registered domain name that has been used in violation of trademark rights, or to transfer a domain name to the trademark owner.
- The maximum punishment for wilful trademark infringement remains three months’ imprisonment. However, if the purpose of the infringement was to obtain a significant and unlawful gain, a sentence of up to a year in prison may be imposed.
- Another novelty is the introduction of a procedure for the administrative re-examination of registered trademarks. The re-examination will be carried out by the Norwegian Intellectual Property Office, and it is hoped that it will represent a cheaper and simpler way of invalidating trademarks than bringing a court action. The administrative re-examination procedure will be available in cases of alleged non-use in order to decide whether the conditions for upholding the trademark registration are fulfilled.
- The statutory requirement that all owners of registered trademarks must have an attorney domiciled in Norway will be replaced by the requirement that all trademark owners must register a postal address which the Industrial Property Office can use to contact them. The Patents Act and the Designs Act have been similarly amended. Therefore, attorneys (agents) domiciled in Norway will not be required to register and maintain IP rights. However, the requirement that communications with the Patent Office must be in Norwegian (or Swedish or Danish) continues to apply. This will inevitably lead many IP rights owners to instruct a local patent, trademark or design attorney as their representative.
Amund Brede Svendsen, Advokatfirmaet Grette, Oslo
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