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The case of SHERLOCK in Norway – Apple fails in trademark dispute with Michael Gleissner

In a ruling issued earlier this week, notorious trademark filer Michael Gleissner has defeated technology giant Apple in a cancellation claim at a Norwegian appeal court.

14 Dec 2018

Brands in the Nordics embrace change as filings remain steady: exclusive data analysis

In our latest data report, we look at Sweden, Norway, Denmark and Finland, and reveal how the leading brands in each country are having to adapt their business tactics to maintain a competitive edge in a changing market.

12 Oct 2018

Coca-Cola dispute sparks censorship debate, Alfred Dunhill scores big in China, and Belt and Road IP cooperation: news round-up

In our latest round-up, we look at how brands should share bad news, why Chinese companies have been accused of “poor branding”, Silk Road member states strengthening IP cooperation, and more.

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9 Nov 2020

Defeat for Apple as Borgarting Appellate Court confirms cancellation of SHERLOCK mark

This decision of the Borgarting Appellate Court illustrates that not every type of commercial use will be sufficient to meet the use requirement in Norway. Read more

20 Oct 2020

Bad news for WhatsApp as Board of Appeal refuses to register logo

This case shows the crucial importance of providing adequate supporting documentation when seeking to prove that a mark has acquired distinctiveness through extensive use on the Norwegian market. Read more

14 Aug 2020

Supreme Court confirms that temporary covering of Apple mark amounts to trademark infringement

This decision of the Supreme Court of Norway illustrates the strong protection afforded to trademark owners in the country, even where the affixed trademark is not visible. Read more

15 Jun 2020

Norway accedes to Singapore Treaty and implements Directive 2015/2436: key changes highlighted

This update highlights some of the main amendments and novelties brought about by the implementation of Directive 2015/2436 in Norway. Read more

Anti-Counterfeiting

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13 Mar 2018

Procedures and strategies for pharmaceutical brands: Norway

Developing and protecting new pharmaceutical product names in Norway is a complex task, requiring experience and know-how at all stages of the process. This chapter outlines key issues to be considered when choosing a new pharmaceutical trademark in Norway. Read more

22 Feb 2008

Court rules in favour of importer of fake handbags

The District Court of Stavanger has found in favour of the importer
of 35 counterfeit Louis Vuitton and Mulberry handbags. The court held that the
handbags had not been imported in the course of trade and that the allegedly
infringing act thus fell outside the scope of Section 4 of the Trademark Act.

Brand management

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17 Apr 2018

WHOIS access charges, NGOs take aim at watch list plans and INTA applauds ‘Brand India’: news round-up

In our latest round-up, we look at a registry’s plans to charge trademark owners for access to WHOIS data and the war of words over plans for an IP markets watch list. Read more

19 Oct 2011

Alcohol brand owners might be allowed to advertise on Norwegian TV

Norway is on the verge of involuntarily allowing the advertising of alcoholic beverages on television, contrary to the country’s strict alcohol policy. This change, which may take place as a result of pressure from the EU Commission, would have a significant impact for owners of alcohol brands.

Enforcement and Litigation

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10 Feb 2020

Supreme Court affirms transfer of ‘appear.in’ is reasonable remedy for infringement

The Norwegian Supreme Court has upheld a decision ordering the transfer of the domain name ‘appear.in’ on the grounds that its use constitutes infringement of the Norwegian trademark APPEAR TV. Read more

12 Dec 2019

Litigation procedures and strategies: Norway

1 Aug 2019

Fjällräven’s G 1000 mark cancelled for goods in Class 25

In a decision that deviates from existing case law and administrative practice, the Oslo District Court has cancelled Fjällräven’s registered trademark G 1000 for goods in Class 25, holding that the mark was not used to communicate the commercial origin of the goods. Read more

28 Jan 2019

Litigation procedures and strategies: Norway

While the bar is set quite high for evidencing use-acquired trademark rights, owners of unregistered trademark rights are afforded the same courses of action as proprietors holding registration certificates from the NIPO. Read more

Government/Policy

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14 Nov 2018

Should government act as defendant when private party appeals decision to cancel mark?

According to a proposal made by Norway’s Department of Justice in the context of the implementation of Directive 2017/2436, the government would no longer act as the counterparty when a decision to cancel a trademark is appealed to the district court. Read more

8 Apr 2015

Government consults on proposal for plain packaging for tobacco products

Norway has taken its first step towards the implementation of plain packaging for tobacco products, with the government releasing a public consultation document. With regard to the country’s commitments under the TRIPS Agreement, the government’s main argument is that trademark holders are not awarded a positive right to use their trademarks under the agreement, but only the right to prohibit third parties from using their marks.

15 Dec 2011

Proposed amendments seek to strengthen enforcement of IP rights

In an effort to further encourage commercial activities based on IP rights, the Ministry of Justice has issued a proposal which aims to strengthen the enforcement of industrial property rights in Norway, and would imply a substantial degree of harmonisation between the Norwegian legislation and the EU IP Rights Enforcement Directive. The most fundamental amendment under the proposal relates to the calculation of damages.

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29 Sep 2017

Oslo District Court invalidates registration of APPEAR

The Oslo District Court recently dismissed an infringement suit against the domain names ‘appear.in’ and ‘appear.no’ on the basis that the word mark APPEAR is non-distinctive and descriptive for telecommunication goods and services. However, the court upheld the registration for the combined mark APPEAR TV.

10 Jun 2014

Norwegians say yes to '.no'

Norid, the registry for ‘.no’ domain names, has announced that Norwegian individuals will be able to register ‘.no’ domain names from June 17 2014. Historically, private individuals were restricted to registering domain names under the ‘.priv.no’ domain name extension. This latest decision to allow Norwegian individuals to register ‘.no’ domain names seems to be another step by Norid to make ‘.no’ domains more widely available.

16 May 2012

'.no' registry launches major data cleansing operation

NORID, the registry responsible for ‘.no’ domain names, has launched a data cleansing operation to update the ownership details for registered domain names in line with the registration requirements for ‘.no’ domain names. NORID’s tightening-up actions seem to go against the general trend of liberalisation for ccTLDs.

12 Apr 2011

Report considers need for new TLDs with national significance

A working group chaired by the Norwegian Post and Telecommunications Authority has submitted a report to the minister of transport and communication on the need for new TLDs with national significance, such as ‘.oslo’ or ‘.bergen’. The working group believes that, if Norway is to introduce new TLDs, these should be governed by both Norwegian law and ICANN’s policies.

Portfolio Management

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11 Dec 2017

Protecting and enforcing design rights: Norway

The following national legislation is relevant for design protection: the Designs Act 2003; the Designs Regulations 2003; the Marketing Control Act 2009; the Copyright Act 1961; the Trademark Act 2010; and the Patent Act 1967. Read more

28 Feb 2017

Supreme Court invalidates registration for ROUTE 66

The Supreme Court has found that the registration of the mark ROUTE 66 for certain tourism-related goods and services was invalid. Among other things, the court found that the average Norwegian consumer would perceive ROUTE 66 as a geographical place. The fact that this road stretch had lost its formal status as part of the US highway system did not imply that it could no longer be considered as a geographical place.

24 Nov 2016

Protecting and enforcing design rights: Norway

Community designs offer no protection in the Norwegian territory since Norway is not part of the European Union. Hence, in order to obtain a design registration, a design owner must file a national registration with the Norwegian Industrial Property Office (NIPO) or an international design registration designating Norway via the Hague System. Read more

14 Jul 2015

Court of Appeals: Intellectual Property Office was wrong to ignore CTM registration

The Borgarting Court of Appeals has overturned a decision of the Intellectual Property Office in which the latter had refused to register an international registration. The registration was based on a CTM and had been accepted in several non-European countries. Among other things, the court held that a CTM registration should be afforded some argumentative weight when assessing whether a mark has the required level of distinctiveness in Norway.

Trademark law

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9 May 2018

No trademark use? Shipment of Apple iPhone screens with obscured logos found not infringing

A Norwegian court has issued a surprising decision regarding what constitutes ‘trademark use’ in a case involving a shipment of Apple iPhone screens that had their trademarks temporarily covered.

26 Feb 2018

Supreme Court: risk of damage to one of trademark's functions is sufficient to constitute infringement

The Supreme Court has considered whether use of a former supplier's mark on the packaging of the new supplier’s products constituted infringement.

21 Dec 2017

Litigation procedures and strategies: Norway

The most relevant legislation relating to trademarks is the Trademark Act (2010/8), implementing the EU Trademarks Directive (2008/95/EC), which applies to Norway as a party to the EEA Agreement (despite Norway not being a part of the European Union). Norwegian legislators are currently working on amendments to bring the Trademark Act into line with the 2015 EU Trademarks Directive (2015/2436). Read more

11 Dec 2014

Norway

The following national legislation is relevant for design protection:
the Designs Act 2003; the Designs Regulations 2003; the Marketing Control Act 2009; the Copyright Act 1961; the Trademark Act 2010; and the Patent Act 1967.

Twitter

19 Jan 2021

@WTRmagazine RT @IAM_magazine: Ahead of President-elect Biden’s inauguration tomorrow, Andrei Iancu bids a fond farewell to @uspto staff ... https://t.c… Read more

16 Jan 2021

@WTRmagazine RT @PRAlliance: Brand Associations Provide a Blueprint for Educating Consumers on Counterfeits and Piracy https://t.co/rR0Zmg1wWY Read more

15 Jan 2021

@WTRmagazine RT @TrademarkBlog: I’m quoted in this: US SCOTUS denies certiorari to parody case, leaving Ninth Circuit open to forum shopping, expert say… Read more

15 Jan 2021

@WTRmagazine RT @patentriff: "Revealed: Andrei Iancu's email to USPTO staff on the day the US Capitol was stormed | World Trademark Review" #patents #US… Read more

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Susan Okin Goldsmith

Partner

East Brunswick, NJ, United States

McCarter & English LLP

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Norway

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Anti-Counterfeiting

Brand management

Enforcement and Litigation

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Trademark law

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