Trademark law reform in the pipeline

On May 15 2009 the Ministry of Justice published the long-awaited Bill on the Act on the Protection of Trademarks (Ot.prp nr 98 (2008-2009)).
New measures contained in the bill include the following: 
  • A simpler, cheaper procedure to have trademarks cancelled on the grounds of non-use will be introduced - the courts will no longer have to be involved.
  • Original products from markets outside the European Economic Area (EEA) will not be capable of being imported into Norway without the trademark owner’s consent. This extends the principle of regional exhaustion to Norway.
  • In order to prevent ongoing trademark infringement, the courts will have the power to order that a domain name be cancelled or transferred to the trademark owner.
If it is passed by Parliament before the summer recess, the bill will enter into force on January 1 2010. The proposal will modernize the legislation and clarify a number of issues, such as the principle of exhaustion. When passed, the bill will bring Norwegian trademark legislation into line with the Singapore Treaty on the Law of Trademarks, to which Norway intends to accede.

One of the main features of the bill is the rule on the regional exhaustion of trademark rights within the EEA. In a decision involving L'Oréal's REDKEN mark, the European Free Trade Agreement Court found that the principle of regional exhaustion applied to Norway (for further details please see "EFTA Court issues rare trademark decision"). Prior to that decision, it was generally assumed that the principle of global exhaustion applied - that is, if a product is put on the market anywhere in the world by the trademark owner or with its consent, the latter cannot prevent the parallel importation of that product into a jurisdiction that applies the principle of global exhaustion. Regional exhaustion means that the trademark owner can resist the parallel importation of products put on the market by it or with its consent only if the product was first put on the market in the EEA. Accordingly, even if the trademark owner has put the product on the market in, for example, the United States or India, its trademark rights in European countries are not thereby exhausted and it can resist the parallel importation of such products into any EEA country. The introduction of this new rule in the Norwegian Trademarks Act clarifies the legal situation regarding parallel imports from non-EEA markets.

Another novelty is the introduction of a procedure for the administrative re-examination of registered trademarks. Re-examination will be carried out by the Norwegian Industrial Property Office and be a cheaper and simpler method of invalidating trademarks than bringing a court action. The current provisions on non-use will be revitalized by the procedure for re-examining whether the conditions for upholding the trademark registration are fulfilled.

The bill also gives the courts power to order a party to cancel a registered domain name that has been used in violation of trademark rights or to transfer an infringing domain name to the trademark owner.

In addition, it includes a proposal to abrogate the current statutory requirement that all owners of registered trademarks have an attorney domiciled in Norway. Instead, all owners of registered trademarks will have to register a postal address which the Industrial Property Office can use for communications. The bill also proposes that the Patents Act and the Designs Act be similarly amended.
Amund Brede Svendsen, Advokatfirmaet Grette DA, Oslo

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