Norway

Norway recently acceded to the Singapore Treaty on the Law of Trademarks and aligned its laws with the EU Trademarks Directive – developments which have both brought significant positive changes. The treaty has established a dynamic international framework for the harmonisation of registration procedures and is the first global instrument to explicitly recognise non-traditional marks. On the legislative front, it is now possible to register marks in Norway consisting of digital sound and video files, presenting new opportunities for innovative brands. Additionally, a new provision has been implemented that expressly prevents bad-faith applications, which previously were not a barrier to registration. The Trade Names Act has also been revamped to promote further harmonisation across the board and provisions on the non-use of trade names have been introduced. On the enforcement front, meanwhile, Customs has been empowered to withhold counterfeits in transit and the rules on the destruction of infringing goods based on presumed consent have been simplified. Overall, therefore, Norway is an increasingly favourable jurisdiction for rights holders.

Firms: enforcement and litigation

  • Advokatfirmaet GjessingReimers AS
  • Advokatfirmaet BAHR AS
  • Advokatfirmaet Thommessen AS
  • Kvale Advokatfirma
  • Schjødt
  • Advokatfirmaet Haavind AS
  • Bryn Aarflot AS 
  • Onsagers AS 

Firms: prosecution and strategy

Advokatfirma Ræder

A new entrant to the WTR 1000 for 2021, full-service Ræder is home to a compact IP group whose quality speaks for itself. It has lately been assisting listed electricity and telecoms provider Fjordkraft with its brand strategy; safeguarding Steelwick’s trademark globally; and keeping counterfeiters at bay for Daniel Wellington. Department lead Vebjørn Søndersrød and senior attorney Trygve Gravdahl “work together on some of the most complex matters. They are knowledgeable and focused on finding a solution that is pragmatic and helpful to the overall business. It is a pleasure dealing with them both”. All-rounder Søndersrød thrives in the IT space, where he taps into a deep reservoir of data protection and domain name expertise. Resident prosecution ace Gravdahl also earns praise for his anti-counterfeiting work: “Trygve has a fantastic track record and handles matters exceptionally well. He negotiates great settlements and is easy to collaborate with.”

Advokatfirmaet BAHR AS

One of the finest M&A firms in town, BAHR has also established itself as a dominant player on the contentious scene and makes frequent appearances at the Supreme Court. Eminent players in the pharmaceutical and petroleum industries, among others, have instant access to an enviable pool of resources – including BAHR LEAP, an innovative platform focused on identifying and creating new technologies with a view to enhancing knowledge management. “IP guru” Are Stenvik is “a formidable litigator and excellent strategist. He knows everything there is to know about trademarks”, having published leading textbooks on the subject; advising on technology transfers and licensing agreements is another forte.

Advokatfirmaet GjessingReimers AS

“If I were to pick one stand-out firm in Norway, it would be GjessingReimers,” reports one commentator. “It maintains a strong presence in the field and its attorneys are extremely skilled, wonderful to work with and truly at the top of the legal market.” The side has worked hard to establish its premier reputation and delivers comprehensive branding services to match. The driving forces are Ida Gjessing and Felix Reimers, both of whom rank among the crème de la crème of the trademark world. Hot-shot litigator Gjessing has a glittering CV, with several committee positions complementing the achievement of co-founding Norway’s first IP and tech boutique. Cut from the same cloth, Reimers scooped a win at the Supreme Court this year on behalf of Appear TV in a dispute with Telenor Digital and Video Communication Services.

Advokatfirmaet Haavind AS

The reliable, forward-thinking Haavind is a popular destination for 360-degree brand protection. On portfolio management and prosecution briefs, it assembles dedicated teams based around the sectors in which clients operate, which dispense commercially attuned counsel that never misses the mark. On the litigation front, it opts for an interdisciplinary approach, combining talent from the IP and litigation departments to successfully settle scores in court. “The extremely skilled, ambitious and pleasant” Vebjørn Iversen and Håkon Bleken are the names to note. Division head Iversen enjoys a vibrant practice, but mainly focuses on dispute resolution and the commercialisation of assets. He supports leading fitness chain SATS Norge, as well as a host of other heavy-hitters in fashion and media. A go-to for patents, Bleken is equally adroit at navigating tricky trademark disputes; several precedential decisions of the past three decades bear his fingerprints.

Advokatfirmaet Thommessen AS

“A stellar choice for complex litigation, Thomessen has one of the best trademark teams in the country and is full of highly skilled lawyers.” The commercial firm has a wealth of resources at its fingertips, including innovative tools that facilitate seamless execution of project plans, budgets and risk assessments. With a base in London, and as Norway’s exclusive Lex Mundi member, it also makes light work of cross-border mandates. Heading up the practice, Camilla Vislie “is bright, analytical, pragmatic and simply one of the elite”. She dispenses razor-sharp guidance in the technology, media and life science sectors.

Bryn Aarflot AS 

“For any and all trademark matters, I would always choose Bryn Aarflot,” enthuses one foreign associate. “When instructed, I know that the matter will be handled in the best possible way, with a team that is organised, quick and on top of every deadline. It is the perfect partner to any business.” Anne Wildeng oversees an A-to-Z practice that effortlessly undertakes everything from trademark clearance and registration to enforcement and licensing. “She is a lovely person to work with and offers clear assessments and on-point recommendations at a reasonable price.” Colleague Astrid Solberg is a portfolio management ace who “produces search reports that are thorough, well organised and timely. She addresses every possible point and leaves no room for ambiguity”. Perceptive strategists and effective negotiators Trine Greaker Herzog and Pål Tonna garner warm plaudits from patrons: “An outstanding lawyer and a wonderful person, Trine has excellent knowledge of domestic and international laws, enabling her to tailor strategies to any problem. She thinks matters through from every angle, including a client’s economic interests, and provides straightforward advice.” “Pål’s ability to guide companies through worldwide registration processes is definitely impressive. He has an in-depth understanding of different markets, analyses business rationales and thinks critically. A really pleasant adviser, he readily makes himself available, is ahead of deadlines and exudes calmness.” Anti-counterfeiting is one of Herzog’s specialties, while Tonna is a dab hand at domain names. Making it into the WTR 1000 this year on a wave of praise, Cecilie Berglund “is a great choice for challenging and complex matters. She has fantastic legal expertise, a pragmatic approach and a willingness to go the extra mile at all times. Cecilie’s advice is of the highest quality and her sense of humour and friendly personality are a bonus”. The ensemble is also building up its contentious capabilities and recently prevailed on behalf of The Coca-Cola Company, securing an injunction, cost coverage and damages amounting to 17.5% of the infringer’s gross revenue. Håkon Tysnes Kaasin, Celine Varmann Jørgensen and Mikkel Lassen Ellingsen masterminded this success. A former stint in-house at Cisco Systems has given Tysnes-Kaasin unique insight into the ambitions and needs of blue-chip companies. In the words of one brand owner: “Varmann Jørgensen is efficient, proactive and kindly provides short recommendations with every report. She handles tasks without us needing to lift a finger; and in intricate scenarios, she ensures we are on track with just the right amount of involvement and reporting.” Another new face in the rankings this year, Lassen Ellingsen is “super-fast, communicates clearly and is precise in his execution. He takes great care of our assets and is critical to the effective handling of our rights internationally”.

Kvale Advokatfirma

“Driven by team spirit and dedication, the lawyers at Kvale work together seamlessly and effectively.” Growth has been a central narrative of late: the firm brought on board several new practitioners – including a former examiner at the Norwegian Industrial Property Office (NIPO) – landed several new clients and continued expanding its well-rounded suite of services. A favourite among industry leaders in the pharmaceutical space, Ingvild Hanssen-Bauer has the technical and legal chops and oratory skills to knock out the wins in even the most complicated cases. Norway’s largest dairy producer, TINE, relies on Marie Vaale-Hallberg, Anne Marie Sejersted and Kaia Bugge Fougner for all its IP, marketing, digitalisation and unfair competition needs. Together they tend to its 1,500-plus mark portfolio and enforce its rights worldwide. The “super-skilled” Vaale-Hallberg “is analytical and tactical, but also demonstrates a great business understanding and is pragmatic too. She and Anne Marie are very knowledgeable, professional and a pleasure to work with”. Vaale-Hallberg also assists Swiss-based life sciences giant Ferring along with the “really bright, superb and versatile” Fougner. Colleague Lars Trygve Jenssen has a deft touch in licensing matters, thanks to his refined M&A and corporate law know-how.

Onsagers AS 

“Deserving of the highest praise, Onsagers has a prominent roster of clients and handles all of its matters with utmost professionalism.” With trademark attorneys and attorneys at law under one roof, it is no mere filing shop, but serves as vital strategic and business partner from the earliest stages of product and brand ideation to commercial success and beyond. Heading up the legal department, Ann-Cathrin Hoel has held several senior positions in heavyweight pharmaceutical and technology companies. She knows what flies with the C-suite and her advice goes into just the right amount of detail. “Quick, sharp and great to collaborate with, Thomas Gaarder-Olsen is exceptional at handling portfolios.” As examples, he manages the marks of three Orkla subsidiaries on a global scale; files for Schlumberger, the world’s top oilfield services provider; and devises strategies for the Norwegian Fashion Hub. Proficient on both sides of the contentious divide, Anders Ervin Solberg is Huawei and Telenor’s trademark guardian of choice. He recently concluded a decade-long opposition proceeding at the EUIPO for the latter, to great success. Tenacious litigator Eirik Rødsand has spent 20 years at the IP coalface and has an all-encompassing knowledge of patents, design and marketing law.

Protector IP AS 

“Protector IP is our preferred partner for non-contentious mandates, simply because they are the best in Norway,” reports one happy client. “It is great on the enforcement side too, where we receive a straightforward, highly responsive service.” It has a fine-grained understanding of the Chinese legal landscape, which it recently showcased in prosecuting marks on behalf of local clothing brand Norrona. Group leader and “highly skilled strategist Christoffer Vedal is customer oriented and really pleasant to work with”. He oversees Active Brand’s global portfolio and recently chalked up a win at the High Court for Unilamp Norden. Working alongside him, Tom Tysbo “is always available on short notice and is one of the most experienced and skilled trademark lawyers in the country. His sharp business acumen makes him an excellent adviser and sparring partner”. In a recent highlight, he devised a global filing strategy for listed seafood company Mowi in relation to its name change from Marine Harvest across 60-plus countries.

Schjødt

Full-service Schjødt has cemented its presence locally through four outposts across the country; it also maintains an office in London and recently set up shop in Sweden too, ensuring that it can execute on both local and multi-jurisdictional briefs with alacrity. Its cosmopolitan clientele also benefits from the firm’s China desk, which primarily focuses on inbound work. Hailed as “efficient, effective and great communicators”, its practitioners work wonders in cancellation and opposition proceedings, but truly shine in litigation and transactional settings. For example, Halvor Manshaus and Thomas Hagen recently prevailed for Aiwa Corporation in a cancellation action before NIPO and the Norwegian Board of Appeal for Industrial Property Rights, and have also been tackling counterfeits for Daimler. “Halvor and Thomas are always ahead of schedule and precise, and their level of preparation truly makes the difference. Their commitment to success is a rare sight.” For cutting-edge technology and life sciences disputes, Knut Sverre Skurdal Andresen is a wise choice; he has lately been assisting Norsk Medisinaldepot, a pharmaceuticals and healthcare wholesaler with more than 185 outlets around the country. Sverre Skurdal Andresen’s anti-counterfeiting capabilities are also impressive, as CamelBak discovered when he relentlessly pursued 65 different infringers marketing and selling fake goods.

Zacco 

Wall-to-wall brand protection is the name of the game for Zacco; and with 500 employees operating from 30 offices across six countries, it has the wherewithal to deliver. The IP titan is constantly seeking new ways to enhance its offering, which already encompasses dedicated cybersecurity, tech and software service streams. Most recently, it upgraded its case management systems to further streamline its processes and expanded its client portal, so that companies have instant access to their entire trademark and domain name portfolios. Division captain Frode André Moen is a vital sounding board for household names such as British American Tobacco, Red Bull and the Bank of America, all of which rely on him for clearance and opposition work, as well as ironclad strategies. A trusted partner to many of Zacco’s illustrious international clients, Tone Tangevald-Jensen makes her debut in the WTR 1000 thanks to some stellar work examples: she recently represented General Electric and US-based Cable News Network at NIPO and assisted PepsiCo and Novartis in their enforcement efforts. Joining her is fellow debutant Per Vegard Bergheim “whose knowledge of international processes and proactivity make him a valuable ally”. He runs the gamut of services for Jotun and O Mustad & Søn, the largest fish hook producer in the world.

Other recommended experts

“A first-class litigator”, Gunnar Meyer is incredibly eloquent and performs outstandingly at all levels of the judicial system. He can be found at Wikborg Rein’s technology and IT law practice group.

Individuals: enforcement and litigation