Trade Mark Litigation

Norway

Bugge, Arentz-Hansen & Rasmussen Aase Gundersen and Gunnar Sørlie

1. Sources of Law

1.1 What are the principal sources of law and regulation relating to trade marks and trade mark litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties).

The principal source of law relating to trade marks is the Act of 3 March 1961 no 4 on Trade Marks (‘the Trade Marks Act’) with supplementary Regulations of 29 March 1996 no 309 and 29 March 1996 no 315. Norway has ratified the Paris Convention, the TRIPS Agreement, the Madrid protocol on the international registration of trade marks and the Nice Arrangement.
Although not a member of the EU, Norway is part of the European Economic Area (‘EEA’) and by way of the specific mechanisms operating under the EEA Agreement between the EU and the EFTA member states, Norway is obliged to implement all relevant EU directives relating to trade mark law. Hence, Norway has implemented the Trade Marks Directive (Directive 89/194/EEC). The Trade Marks Regulation (Regulation 94/40/EEC) is, on the other hand, not legally valid either directly or indirectly in Norway, and thus a Community trade mark registration has no effects in Norway, unless the registration is made valid in Norway in accordance with the Madrid protocol.
As there are few procedural provisions in the Trade Marks Act, trade mark litigation by and large follows the rules set forth in the Act of 13 August 1915 no 6 (‘the Civil Procedure Act’). This Act will be replaced by the Act of 17 June 2005 no 90 (‘the New Civil Procedure Act’), most likely as of 1 January 2008. Relevant for cross-border litigation is the Lugano Convention, the EEA counterpart to the Brussels Convention, implemented in Norwegian law by the Act of 8 January 1993 no 21.
When interpreting statutory provisions, Norwegian courts will consider the travaux preparatoires as well as established case law and administrative practice in order to establish the correct interpretation.

1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?

There is no general rule in Norwegian law on what sources take precedence in the event of conflict; it depends on an overall evaluation of the sources of law in each case. However, the starting point is always the wording of the relevant statutory provision, which will be construed and, if necessary, supplemented by the courts. Although not binding in a strict sense, the case law of the Supreme Court is considered as authoritative and largely binding for the lower courts.
Acts and Regulations which serve to implement Norway’s obligations under the EEA Agreement take precedence over other Acts and Regulations (see section 2 of the EEA Act of 27 December 1992 no 109).

2. Court and Administrative System

2.1 Can third parties oppose/request cancellation of a national or supranational (eg Benelux, Madrid Agreement and Protocol, Community Trade Marks) trade mark application/registration in your country? If so, on what grounds? Please briefly describe the opposition/cancellation procedure(s).

Any third party may oppose the registration of a national or international trade mark by the Norwegian Patent Office in accordance with the rules in chapter 2 of the Trade Marks Act. This may be done by filing an objection against the registration before the registration is finally accepted, or by filing an opposition within two months after the publication date of the registration. Full rights as party to the case is only gained in an opposition procedure and not by filing an objection pre-registration.
Objections and oppositions must be based on the trade mark application or registration being contrary to the conditions for registration in the Trade Marks Act (see 3.5 below).
An objection is tried by the Norwegian Patent Office in conjunction with the trade mark application. The filer has no other remedies against a decision to register the trade mark despite the objection than to file an opposition after the registration or to initiate invalidity or cancellation proceedings before the courts.
An opposition, which must be filed within two months after the registration of the trade mark (see section 21 of the Trade Marks Act), is also tried by the Norwegian Patent Office. The Patent Office is to give the trade mark owner notice of the opposition and the opportunity to submit his observations. Both parties to an opposition may appeal the Patent Office’s decision to the Board of Appeals of the Norwegian Patent Office (see section 22 of the Trade Marks Act). Both objections and oppositions are, as a rule, written proceedings, but the Patent Office may decide to hold an oral hearing (see section 7 of the Act of 2 July 1910 No 7). Decisions by the Board of Appeals of the Patent Office to deny registration or to cancel a registration may be brought before Oslo District Court within two months of the decision (see section 22a of the Trade Marks Act).
Proceedings to cancel a registered trade mark must be brought before Oslo District Court (see section 42 of the Trade Marks Act). However, if both parties agree, cancellation cases may be tried by the Board of Appeals of the Norwegian Patent Office (see section 25c of the Trade Marks Act).

2.2 In which courts are trade marks enforced? Are they specialised trade marks courts? If not, what level of expertise can a trade mark holder expect from the courts?

Norway does not have a specialised court system. Trade mark infringement cases are adjudicated by the ordinary courts and a trade mark holder can therefore not expect a high level of trade mark law expertise from the judges. The proceedings must be instituted at the district court in the first instance, normally in the district in which the defendant resides although an infringement action may also be brought in the district in which the infringement takes place.
However, by virtue of the Trade Marks Act section 42, Oslo District Court is vested with exclusive jurisdiction in the first instance over certain trade mark matters, including actions related to invalidity or cancellation of trade mark registrations. In Oslo District Court, these cases are dealt with by designated judges, who in practice also hear other trade mark (infringement) matters. Consequently, at this court litigants can expect judges with experience of trade mark cases. The judges of the Court of Appeals will generally not be experienced in trade mark matters.

2.3 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?

The Norwegian court system is hierarchical, but first instance courts are not strictly speaking bound to follow decisions handed down by second instance courts. Decisions from the Supreme Court are authoritative and are generally followed by first and second instance courts unless the cases are distinguishable on the facts or other significant sources of law provide strong implications in favour of a diverging result. Decisions of foreign courts are not binding on Norwegian courts, but may be taken into account at the court’s discretion, particularly on issues which have not been addressed by the courts in Norway. Decisions from the other Scandinavian countries (Sweden and Denmark) will normally be considered to provide some guidance since historically the Trade Mark Acts of these countries were harmonised. There is a new trend indicating that decisions from other countries might also be expected to be taken into account, particularly on issues related to the Trade Mark Directive.
Decisions from the European Court of Justice regarding the interpretation of the Trade Mark Directive will carry considerable weight in proceedings before a Norwegian court. The Supreme Court has also recently expressed the opinion that decisions from EU organs related to the Trade Marks Regulation, including the Court of First Instance and the Office for the Harmonisation of the Internal Market (OHIM), should also be taken into account by Norwegian courts to the extent they are relevant for the interpretation of the Trade Mark Directive (see in particular the Supreme Court’s decision in Rt 2002 391).

2.4 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or national or supranational government agency shall they be brought (eg the national Trade Mark Office or the OHIM in Alicante)?

Invalidity actions fall under the exclusive jurisdiction of Oslo District Court (see section 42(2) of the Trade Marks Act). Any court may adjudicate an infringement action, but cannot acquit the defendant on the basis that the allegedly infringed trade mark is invalid unless and until a decision to this effect has been handed down by Oslo District Court (or Borgarting Court of Appeal or the Supreme Court on Appeal). Thus, as the main rule, courts do not deal with infringement and invalidity simultaneously. A defendant in an infringement action who wishes to challenge the validity must bring a separate lawsuit before Oslo District Court and cannot bring invalidity into the infringement proceedings as a defence. However, if Oslo District Court is the court seized with the infringement action, the defendant may initiate a cross-action for invalidity and have the claims for infringement and invalidity simultaneously adjudicated. If the infringement action is pending before any other court, a challenge against the validity has to be brought in separate proceedings before the Oslo District Court.
Infringement proceedings may be stayed pending the outcome of invalidity proceedings (see section 107 of the Civil Procedure Act). However, the court may refuse to grant such a stay if all parties do not agree. Alternatively, a party may request the infringement action be moved to Oslo District Court and joined with the invalidity action (see section 38 of the Act of 13 August 1915 no 5 (‘The Courts of Justice Act’) and section 98 of the Civil Procedure Act). Again, the court may refuse such application at its discretion.
If acting within two months of the publication of a trade mark, a party who wishes to contest the validity of the trade mark may, instead of starting an invalidity action, file an opposition to the trade mark with the Norwegian Patent Office (see section 21(1), of the Trade Marks Act), and stay of infringement proceedings may also be requested on such basis.
If both parties agree, questions relating to the invalidity or cancellation of a trade mark may be finally settled by the Board of Appeals of the Norwegian Patent Office (see section 25c of the Trade Marks Act).

2.5 Who can represent parties before the courts handling trade mark litigation and/or the national or supranational government agency dealing with trade mark validity issues?

As a rule, parties use attorneys-at-law to represent them in court, even if section 44(2) of the Civil Procedure Act provides that certain other persons can represent a litigant. Foreign attorneys may be used, but must normally appear along with a Norwegian attorney if he or she is not fluent in the Norwegian language (see chapter 10 of Regulation of 20 December 1996 no 1161). Only attorneys who are specifically admitted (or seeking to be admitted) to the Supreme Court can appear at hearings before the Supreme Court (see section 221 of the Courts of Justice Act).
In opposition proceedings before the Patent Office, parties are often represented by trade mark agents employed at specialised patent and trade mark agencies engaged in the filing and maintenance of patent and trade mark applications, although anyone may in principle represent a party in such proceedings. According to section 31 of the Trade Marks Act, a trade mark owner who is not domiciled in Norway must have a Norwegian-domiciled representative registered in the Norwegian Trade Marks Register. This requirement does not, however, apply when the Patent Office decides whether an internationally registered trade mark shall be registered in Norway under the Madrid Protocol.
However, as this requirement, if applied to persons domiciled within the EEA, may be contrary to Norway’s obligations under the EEA Agreement, an amendment is underway and has been proposed in the new Trade Marks Act (see 11.2 below).

2.6 What is the language of the proceedings? Is there a choice of language?

The language of court proceedings is Norwegian (see sections 135 and 136 of the Courts of Justice Act). As a rule, all written material (pleadings and documentary evidence) must be in Norwegian or be translated. Oral proceedings are held in Norwegian with the assistance of interpreters if required. The court may, however, accept documentary evidence or testimonies in a foreign language if it is comprehensible for everyone involved – in practice Swedish, Danish or English.
Generally, an opposition must be filed in Norwegian, Danish or Swedish (see section 2a of Regulation of 29 March 1996 no 309). However, if particular circumstances are present the Patent Office might also accept oppositions filed in other languages (see section 2a(3), of Regulation of 23 December 1996 no 1263). The Patent Office may conduct oral proceedings on oppositions (see section 7 of Act of 2 July 1910 no 7). Such proceedings are held in Norwegian.

3. Substantive Law

3.1 To what extent are unregistered trade marks protected under your country’s laws?

According to section 2 of the Trade Marks Act, unregistered trade marks may enjoy the same level of protection as registered trade marks under Norwegian law. In order to obtain protection, an unregistered trade mark must be ‘well known within the circle of trade concerned in this country as a distinctive sign for someone’s goods’. It is not a requirement under section 2 that the trade mark is well known as a distinctive sign for the trade mark owner’s goods; it is enough that it is well known as a distinctive sign for someone’s goods. ‘Goods’ in this context also includes services.
The requirement that the trade mark must be ‘well known’ must be assessed based on an overall assessment of the circumstances in each individual case. A trade mark will normally be considered well known if it is known by a large enough part of the circle of trade that it, through this, has achieved a tangible goodwill value.
The scope of protection for an unregistered trade mark will always be limited to the goods and/or services the trade mark is ‘well known’ as a distinctive sign for. Unlike a registered trade mark, the scope of protection for an unregistered trade mark will also be limited to the geographical area in which the trade mark is well known.

3.2 How is trade mark infringement assessed? Does protection extend to translations or to conceptually identical but graphically different trade marks?

According to section 4 of the Trade Marks Act, the trade mark right entails that no one other than the right holder may use the trade mark, or a distinctive sign likely to be confused with the trade mark in the ordinary course of trade. Section 6 of the Trade Marks Act specifies that two distinctive signs are only likely to be confused in the ordinary course of trade if they relate to identical or similar goods. Confusion in the ordinary course of trade occurs, inter alia, when the average consumer is given an erroneous impression that there is a commercial connection between the trade mark owner and the alleged infringer.
As a result of these provisions, trade mark infringement must be assessed based on a combination of the liability of confusion of the signs themselves and the similarity between the goods and/or services they are used for. This means that, depending on the circumstances in the individual case, both translations and conceptually identical but graphically different signs may be considered to infringe a protected trade mark.
Likelihood of confusion is, as in the Trade Mark Directive article 5, not a requirement for infringement if the distinctive signs are identical and are used for identical or similar goods and/or services. In the same way, the signs need not have been used for identical or similar goods and/or services if the protected trade mark is ‘so well known and established in this country that it would imply an unreasonable exploitation of or be detrimental to its goodwill if the other sign were to be used by someone else’ (section 6(2), of the Trade Marks Act).
Infringing use of a protected trade mark is also considered to occur if someone in offering spare parts, accessories, or the like, refers to the trade mark in such a way as to give the wrongful impression that the goods offered originate from the trade mark owner or that he has consented to the use of the trade mark (see section 4(2), of the Trade Marks Act).

3.3 Are there other causes of action for trade marks (eg dilution)?

Dilution or danger of dilution of a trade mark is not in itself a cause of action under Norwegian trade mark law. However, depending on the circumstances, an otherwise legitimate use by third parties that leads to the dilution of a trade mark may be contrary to the unfair competition rules in the Act of 16 June 1972 No 7 on control of marketing and contract terms and conditions (the Marketing Control Act). As stated in 3.12 below, proceedings based on the unfair competition rules may be brought in parallel with trade mark infringement proceedings.
Another potential defence against use that leads to the dilution of trade marks can be found in section 34(2), of the Trade Marks Act. According to this provision, a trade mark owner may invoke his or her trade mark rights (and not just the contract remedies) against a licensee who uses the trade mark in breach of the conditions of the licence agreement.

3.4 Can a trade mark be enforced against a domain name, a trade name, a pseudonym or other distinctive signs?

According to section 4 of the Trade Marks Act, the trade mark right protects against all use of the same distinctive sign as the trade mark, or one liable to be confused with it, by anyone other than the trade mark owner. This means that, as a starting point, a trade mark may be enforced against any and all types of distinctive signs under Norwegian law.
An exception to this is contained in section 5(2), of the Trade Marks Act. According to this provision, trade marks cannot be enforced against the use by others of their personal name, business name or address in the course of trade, as long as the use is in keeping with good business practice. The importance of this exception is somewhat diminished by sections 2-6 of the Act of 21 June 1985 no 79 on the exclusive rights to business names, which sets out a condition for the registration of a business name that there is no likelihood of confusion with existing trade marks protected by the Trade Marks Act.

3.5 On what grounds can a trade mark be invalidated?

Section 25 of the Trade Marks Act states that a trade mark can be invalidated if it has been registered contrary to the provisions of the Trade Marks Act. Section 25 also contains provisions for the cancellation of a trade mark if certain circumstances occur after the registration of the trade mark.
The main grounds for invalidating a trade mark are:

Lack of distinctiveness (see section 13 of the Trade Marks Act);
The trade mark is likely to be perceived as another person’s business name or as another person’s name (see section 14(4) of the Trade Marks Act);
The trade mark is likely to be perceived as the distinguishing title of the protected artistic, literary or musical work of another person, or infringes the copyright to such a work or the photography or design rights of another person (see section 14(5) of the Trade Marks Act);
The trade mark is likely to be confused with the name or business name of another person or with a trade mark registered for another person in accordance with an application filed earlier, or which was established by use for another person at the time when the application for registration was filed (see section 14(6) of the Trade Marks Act);
The trade mark is likely to be confused with a trade mark which someone else has started to use before the applicant, and the applicant was aware of this use when he filed his application for registration (see section 14(7) of the Trade Marks Act).

A trade mark registration can be cancelled on the following grounds:

If the trade mark after registration has obviously lost its character as a distinctive mark (see section 25(2), of the Trade Marks Act);
If the trade mark has become deceptive, contrary to public order or likely to cause offence (see section 25(2), of the Trade Marks Act);
If the use requirements are not fulfilled (see under 3.6 below).

3.6 Must use requirements be satisfied to maintain the trade mark registration? If so, is there any definition of what constitutes use?

According to section 25a of the Trade Marks Act, a trade mark registration may be cancelled by the courts if the trade mark owner has not started using the trade mark in Norway for the goods and/or services it is registered for within five years from the date of publication. Similarly, a trade mark may be cancelled by the courts if the use of the trade mark has been interrupted for five continuous years.
The use requirement under section 25a of the Trade Marks Act will be fulfilled if the trade mark owner uses the trade mark to an extent corresponding to normal marketing activities in the trade marks owner’s field of business.
A trade mark may not be cancelled because of lack of use if the trade mark owner starts using the trade mark before a cancellation action is brought before the court. Use in the last three months before such action is brought will not have this effect if the trade mark owner only started using the trade mark after gaining knowledge of the planned cancellation action.

3.7 What other defences, if any, are available to an alleged infringer? Does your country’s law provide for prior user rights?

The most important defences are:

Non-infringement: the most obvious defence available to a defendant is that his trade mark does not infringe the claimant’s trade marks.
Exhaustion of rights: Norway has hitherto applied a principle of international exhaustion of trade mark rights. However, it is unclear if Norway is bound by the EEA Agreement to limit the geographical scope of exhaustion to the EU/EEA. A clarification of this issue will require either an authoritative court decision or a change of legislation.
Invalidity or that a trade mark should be cancelled may not be raised as a plain defence due to the separation of invalidity and infringement proceedings (see 2.4 above), but the challenge of a trade mark’s validity in separate proceedings is a possible defensive step against an infringement claim.

Right of prior use: this may be invoked by a defendant claiming to have obtained the right to a trade mark likely to be confused with the claimant’s trade mark (see 3.2 above) prior to the claimant acquiring the right to his or her trade mark (see section 7 of the Trade Marks Act).
Laches: if the defendant has acquired rights by use to his or her distinctive sign after the claimant acquired rights to his or her trade mark, and the claimant has not taken steps to stop the defendant’s use within reasonable time, the defendant’s rights may exist beside the claimant’s rights.

3.8 To what extent can enforcement of a trade mark expose the trade mark holder to liability for an antitrust violation?

The enforcement of a trade mark in itself will not expose the right holder to liability for an antitrust violation. However, in theory it is possible – although highly unlikely – that a trade mark holder may incur such liability if the particular circumstances under which a trade mark was being enforced were found to amount to an abuse of a dominant position.

3.9 Can a court only partially invalidate a trade mark?

The Trade Marks Act contains no provisions on the partial invalidity of a trade mark. Legal theory has, however, taken the view that a court can decide to partially invalidate a trade mark (see Stenvik and Lassen, Oversikt over Norsk varemerkerett, (2003), page 175). The same would apply for the cancellation of trade marks. Section 25a of the Trade Marks Act specifically states that a trade mark shall only be partially cancelled if it has been used for some, but not all, of the goods for which it has been registered.

3.10 Is it possible to amend a registered trade mark during a lawsuit?

The courts themselves may not amend a trade mark registration other than in the sense that they may partially invalidate or cancel the trade mark as the result of cancellation or invalidity proceedings.
After the trade mark registration, the trade mark owner still has a limited opportunity to file motions to the Norwegian Patent Office to amend the trade mark both as regards the design of the trade mark and the types of goods and/or services it is registered for.
Regarding amendments to the design of the mark, section 24 of the Trade Marks Act states that the trade mark owner may file motions for ‘minor alterations, which do not affect the impression of the trade mark as a whole’ with the Patent Office. It is generally accepted that this amendment option may not be used to shift the scope of the trade mark’s protection, for instance in order to avoid an opposition or an invalidity claim based on the trade mark being likely to be confused with an older trade mark (see Stenvik and Lassen, Oversikt over Norsk varemerkerett, page 161).
Regarding amendments to the types of goods and/or services a trade mark is registered for, section 27 of the Trade Marks Act is generally interpreted as allowing the trade mark owner to file a motion to limit the types of goods and services the trade mark is registered for, but not to expand them.

3.11 Are there any grounds on which an otherwise valid trade mark can be deemed unenforceable, owing to misconduct by the trade mark holder, or for some other reason (eg expiry of time limit)?

Generally, an otherwise valid trade mark cannot be deemed unenforceable as such. There are no general time limits for filing of trade mark infringement lawsuits, but a claim for monetary damages will as a rule be statute barred if court action is not initiated within three years of the date the aggrieved party should have become aware of the loss and the identity of the infringer (see section 9(1) of the Act of 18 May 1979 no 18 on Limitation). However, a right holder who is aware of infringing activities but fails to object to the infringing activity may risk enforcement being barred under general principles of acquiescence or laches (see also 3.7 above on the specific rule on laches in the Trade Marks Act). Hence, trade mark owners faced with infringement should initiate proceedings within a reasonable time of having become aware of the infringing activity. In particular, preliminary injunction proceedings must be initiated rapidly after becoming aware of infringing activities, as it will otherwise be difficult to establish the required necessity of such measures.

3.12 Can a trade mark holder bring a lawsuit claiming both trade mark infringement and unfair competition for the same set of facts? Is it possible to bring parallel unfair competition proceedings, whether or not the trade mark is registered?

There is no limitation under Norwegian law on the possibility of bringing lawsuits claiming both trade mark infringement and unfair competition for the same set of facts. As the claim under the unfair competition rules will be a different claim from the one under trade mark law, it will also be possible to bring parallel unfair competition proceedings, regardless of whether the trade mark is registered or not. In principle such action could be brought after an unsuccessful infringement action. However, the normal course of action would be to bring the trade mark and unfair competition proceedings as a combined lawsuit before the same court.

4. Parties to Litigation

4.1 Who can sue for trade mark infringement (trade mark holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?

To have standing to sue, a party must prove a sufficient legal interest in the lawsuit (see sections 53 and 54 of the Civil Procedure Act). Apart from the trade mark holder, an exclusive or sole licensee is deemed to have sufficient standing to sue for infringement. However, a non-exclusive licensee will generally not be regarded as having a sufficient interest unless a right to enforce against third party infringement is expressly granted in the licence. A licensee does not need to be registered to sue. Whether a distributor would be considered to have a sufficient interest would depend on the circumstances. It is likely that a court would accept a lawsuit also from a sole distributor who alleges to have a claim for trade mark infringement, at least if the lawsuit is also based on other grounds such as unfair competition.

4.2 Under what conditions, if any, can an alleged infringer bring a lawsuit to obtain a declaratory judgment on non-infringement?

An alleged infringer may bring an action for declaratory judgment of non-infringement if he can prove that he has a sufficient legal interest in such action. The alleged infringer must demonstrate an actual need for court clarification of whether the activities can continue without liability for infringement, ie it must be demonstrated that he may reasonably fear negative sanctions and/or reactions from the right holder if the activity continues. Such need for court clarification may be demonstrated by reference to a warning letter from the right holder demanding that infringing activities are ceased.

4.3 Who can be sued for trade mark infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to trade mark infringement by someone else?

Trade mark infringement proceedings might be directed against any defendant allegedly taking part in the infringing activities. Thus, in addition to the infringing company as such, the defendant(s) might in principle include its contributory employees and/or CEO and the directors of the board. If claims are brought against natural persons, the claims must be related to their alleged acts or, as the case may be, omissions; omissions being especially relevant in relation to board directors.

4.4 Is it possible to add or subtract parties during litigation?

A defendant may not add or subtract parties to litigation without the consent of the claimant, while the claimant may on certain conditions add additional defendants to the lawsuit after the originating writ has been served upon the original defendant(s) (see section 61 of the Civil Procedure Act). All such changes must be made as early as possible. Furthermore, defendants may only be added to the action if the claims against all defendants relate to the same set of laws and facts and have the same court venue (see section 68(2) of the Civil Procedure Act).
A claimant may subtract defendants. However, if the originating writ has already been served on the defendant such subtraction means concurrently renouncing the infringement claim (see section 67(1) of the Civil Procedure Act).

5. Enforcement Options

5.1 What options are open to a trade mark holder when seeking to enforce its rights in your country?

A trade mark holder seeking to enforce its rights in Norway must file an ordinary lawsuit before a competent court, normally in the district where the infringer resides (see sections 17 and 18 of the Civil Procedure Act) or at the place of the infringement (see section 29(1) of the Civil Procedure Act). There are no administrative infringement proceedings available.

5.2 Are criminal proceedings available? If so, what are the sanctions?

Criminal proceedings are available for wilful infringement or contribution to infringement (see section 37 of the Trade Marks Act). The sanctions are fines and/or imprisonment for a maximum of three months). Public prosecution is conditional upon a request from the aggrieved party, but such request will not automatically trigger a public prosecution. In reality, such cases are often not a priority for the police and few cases are in fact prosecuted. In addition to the trade mark holder, an exclusive or sole licensee will have status as an aggrieved party.

5.3 Are border measures available?

Border measures are provided by section 15-13 of the Act on Enforcement of Claims, Act of 26 June 1992 no 86 (the ‘Claims Enforcement Act’) and section 39 of Act of 10 June 1996 no 5 on Customs. The provisions state that a trade mark holder who has grounds for suspecting importation of infringing goods may apply to the district court for a preliminary injunction ordering the customs authorities to suspend the release of such goods. The court will normally require the right holder to post a security for the potential loss suffered by a wrongful seizure (see section 15-6(1), second sentence of the Claims Enforcement Act).
Section 39 of the Customs Act, as recently amended, provides for ex officio action from the customs authorities. The customs authorities are now entitled to notify the holders of intellectual property rights in the event of suspected infringements, and also to retain the goods suspected of infringements for up to five days, even if preliminary injunction at this stage is not in place. Norwegian law does not provide for a simplified procedure for destruction of infringing goods without lawsuit.

5.4 To what extent are courts willing to grant cross-border or extra-territorial injunctions?

The recent continental legal theory discussions and court practice on cross-border and extra-territorial injunctions have mostly been related to Community trade marks. Since a Community trade mark is not directly valid in Norway, many of the ‘continental’ issues are not relevant.
Consequently, a cross-border injunction issued by a Norwegian court against defendants in other states would primarily be relevant only in relation to violations of a Norwegian trade mark. In such cases, a Norwegian court would accept defendants domiciled abroad to be joined in injunction proceedings in Norway on the basis of article 6(1) of the Lugano Convention (which corresponds to article 6(1) of the Brussels Convention), ie provided the lawsuit is based upon similar legal and factual circumstances.
As a rule, an injunction issued by a Norwegian court relating to a Norwegian trade mark will cover Norwegian territories only, possibly also covering preparatory steps abroad aimed at subsequent violations involving Norwegian territory.

5.5 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?

Again, the recent continental legal theory discussions and court practice on ‘torpedo’ actions have mostly been related to Community trade marks. Since a Community trade mark is not directly valid in Norway, many of the ‘continental’ issues are not relevant.
An action in a foreign court relating to a foreign national trade mark which has an equivalent in a Norwegian trade mark would not have any relevance for Norwegian proceedings relating to the Norwegian trade mark.
An action in a foreign court aimed at securing a declaratory non-infringement judgment in respect of a Norwegian trade mark against a Norwegian defendant not being domiciled or doing business in that country would most likely not prevent a Norwegian court from adjudicating a corresponding lawsuit in Norway. However, the action abroad could result in the Norwegian court informally staying the Norwegian proceedings, pending clarification of the involved issues.

5.6 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve trade mark disputes? How widespread are ADR methods and in which sectors? If arbitration is available to assess invalidity, will your Trade Mark Office recognise and execute an arbitral award declaring a trade mark invalid?

ADR methods are available for trade mark disputes on the same basis as for other civil disputes, but are rarely used in practice as they are generally deemed unsuitable for this type of dispute. An arbitration tribunal has no competence to pronounce a trade mark invalid, and must therefore treat it as valid for the purposes of deciding an infringement claim (see section 9(1) of Act of 14 May 2004 no 25 on Arbitration). As part of ordinary court proceedings, judges will normally try to mediate between the parties and encourage them to reach a settlement. In addition, a specific scheme of court mediation has been applied in certain courts of first instance over the past few years and will become permanent under the New Civil Procedure Act (see chapter 8-II).

6. Procedure in Civil Courts

6.1 What is the format of trade mark infringement proceedings?

Trade mark infringement proceedings are initiated by a writ from the claimant followed by a defence from the defendant, which usually will have to be filed within 21 days of the service of the writ. The court will then fix a date for the main hearing. The waiting time varies from court to court, but the main hearing will normally be held within six to nine months although some courts have delays beyond this. There will usually be a further exchange of written pleadings during this period (with deadlines for each filing set by the court) which includes the submission of all documentary evidence the parties wish to rely upon. As a general principle such pleadings serve as preparations for the case. Norwegian procedural law builds on the principle that the court may only rely on what is being presented orally to the court at the main hearing, therefore the case will be argued in full directly before the court at the main hearing, and any written evidence upon which a party wishes to rely must be read out at the main hearing. Depending on the amount of written evidence and the complexity of the case, the main hearing typically lasts one to three days, in exceptionally complex cases even a week or more.

6.2 Are disputed issues decided by a judge or a jury?

Juries are not used in civil cases in Norway. Thus, all disputed issues are decided by professional judges – one judge in the district court, three judges in the Court of Appeal and five judges in the Supreme Court. Expert lay judges are rarely used in trade mark cases, although the parties may in principle request their participation in a panel with the professional judges.

6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?

The parties are free to submit documentary evidence during the exchange of pleadings that precedes a trial, including documents originating from the proceedings before the Patent Office. As a rule, witness testimonies must be presented in oral form and directly before the court in the main hearing. Affidavits or other statements may only be used within the limitations of section 197 of the Civil Procedure Act, by which out-of-court statements prepared in connection with the litigation, except for statements given by court-appointed experts, may only be submitted with the consent of the other party, or if it is impossible to examine the person that has given the statement in court. Hence, use of written statements from privately-appointed experts is as a rule dependent upon the consent of the other party.
With section 21-12 of the New Civil Procedure Act the rule laid down in section 197 will be reversed, and the use of written statements will generally be allowed as long as the other party may cross-examine the person that has given the statement in court.
Both factual and expert witnesses may be used as the parties see fit. The examination of witnesses is less formal than in many foreign courts. Generally, the witness will first be examined by counsel for the party whose witness it is, and then cross-examined by counsel for the other party (see section 218(1) of the Civil Procedure Act). There are no particular rules governing examination-in-chief and cross-examination. However, the court has a fairly wide discretion to administer the witness examination and some judges take an active role in examining the witness, and may also cut off a line of questioning by a party’s counsel.

6.4 To what extent is survey evidence used (eg to support acquired distinctiveness, likelihood of confusion)? What is its relevance in proceedings (eg party allegation, evidence)? Who decides which consumers are questioned in the survey (eg the court, court expert)? What level of cost should one expect to incur to carry out a survey? Are these costs recoverable from the losing party?

Survey evidence may be presented by the parties to trade mark-related proceedings within the limitation set by section 197 of the Civil Procedure Act (soon to be superseded by sections 21-12 of the New Civil Procedure Act, see discussion above in 6.3). The court will not of its own accord carry out surveys or appoint any representative or expert to carry out surveys. This also means that the details concerning how the survey is performed will be decided by the party presenting the survey (or the institution appointed by the party to carry out the survey for it) unless the parties agree to conduct a joint survey.
Consequently, any surveys presented by either party will have the status of evidence served by the party who initiated the survey, and the survey result is merely a party allegation to be assessed by the court. Hence the importance attached to such surveys will vary depending on the quality and independence of the survey and its methods. However, the courts can be expected to attach considerable weight to a professional survey carried out by an institution that is reliable and reasonably independent from the parties, and particularly if the other side has had a chance to comment on the questions and methods.
The level of costs incurred will vary greatly with the scope of the survey chosen by the party carrying out the survey. Any costs associated with carrying out a survey will be recoverable from the losing party to the same extent as other costs related to the proceedings (see 10.2 below).

6.5 Is evidence obtained for criminal proceedings admissible in civil proceedings and vice versa?

There is no general rule in Norwegian law preventing evidence obtained for criminal proceedings from being admissible in civil proceedings and vice versa.

6.6 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?

There is no general pre-trial disclosure obligation in Norwegian law. For written evidence a form of ‘specific discovery’ is available in the course of the proceedings. Specific documentary evidence may be obtained by request to the other party or third parties to submit documents in accordance with sections 250 and 251 of the Civil Procedure Act. Documents must be reasonably individualised (see section 253). Therefore, a general request for all correspondence regarding a matter is not permissible. Documents containing confidential information may be withheld or redacted. Although the court may order a party to disclose the documents requested, there are no means to enforce such an order against a party.
Evidence from an adverse party and third parties should as a rule be obtained by oral testimony. If a person is staying on Norwegian territory, he is obliged to give such testimony after being legally summoned (see sections 111 (parties) and 199 (non-parties) of the Civil Procedure Act). In order to review physical evidence, the court may decide to conduct an inspection in accordance with chapter 17 of the Civil Procedure Act.
Although pre-trial discovery in a general form is not available, chapter 20 of the Civil Procedure Act provides for the securing of evidence before the filing of legal proceedings if there is reason to fear that evidence might otherwise be lost or its availability seriously hampered (see section 267). If possible, the applicant is required to name the opposing party, and that party will be heard before the court’s ruling. However, such an application may also be filed for the purpose of securing evidence as to the identity of an unknown infringer.
Section 271a of the Civil Procedure Act provides that an application for the securing of evidence may be dealt with on an ex parte basis if there is reason to fear that the opposing party may hinder the collection of evidence. This provision was introduced in 2004 and serves to implement article 50 TRIPS with respect to disputes over intellectual property rights.

6.7 What level of proof is required for establishing infringement or invalidity?

The level of proof required for establishing infringement or invalidity follows the general principle of preponderance of the evidence. Hence, the court will base its decision on the facts proven on a balance of probabilities. However, the threshold may in practice be slightly higher for proving invalidity than infringement, as the courts will place some emphasis on the fact that the registration criteria have already been assessed by the Patent Office.

6.8 How long do trade mark infringement proceedings typically last? Is it possible to expedite this process?

The duration of first instance proceedings in trade mark matters varies with the workload of the court, but will typically be 8–15 months from the date of the originating writ, depending on the complexity of the case. It is difficult unilaterally to expedite the proceedings. However, if the claimant and the defendant cooperate, a somewhat faster adjudication might be possible.

6.9 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of a defendant?

A defendant in infringement proceedings may seek to delay the proceedings by filing an invalidity action or an opposition and request stay of the infringement proceedings on this basis. The claimant may try to counter such tactics by requesting the court not to stay the infringement proceedings or to join the two proceedings. Other tactics of the defendant may be to delay his availability for hearing so that the case is scheduled for the latest date possible, or to ask for repeated extensions of time limits to file written pleadings.

7. Final Remedies

7.1 What remedies are available against a trade mark infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?

The right holder may obtain a permanent injunction, which may order the defendant to cease and desist from the infringing activities. In addition, the infringer may be ordered to recall infringing products from the channels of trade. Section 40 of the Trade Marks Act provides an exhaustive list of other measures that may be imposed upon the claimant’s request – including an order to remove or alter the trade mark from infringing products, or seizure of the goods. Damages and other monetary remedies are available (see below 7.3).
Under Norwegian law, the defendant may not be ordered to publish the judgment. However, the claimant might normally publish the judgment on his own initiative, in as far as it relates to issues that have been argued in open court and the court has not prohibited publication of the whole or parts of it. Decisions from the Supreme Court and the Courts of Appeal are published regularly in the subscription database ‘Lovdata’. Fresh decisions are available online for free at www.lovdata.no. Decisions are published in Norwegian.
Under section 148 of the Civil Procedure Act, the court may grant anticipatory enforcement of an injunction, making it enforceable before it becomes final and binding (rechtskraftig). In such case, the injunction may be enforced even if the defendant appeals the judgment. Although the provision generally is rarely used in practice, it is of practical interest especially in relation to infringement cases in which a preliminary injunction was not requested or obtained. Anticipated enforcement is conditional upon the claimant providing security for the potential loss to the defendant.

7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?

A court decision is legally binding only upon the parties to an action. Thus, an injunction is not effective against the infringer’s suppliers or customers as long as these have not been parties to the action. However, the injunction against the infringer may order the recall of products from the channels of trade, thereby also giving it practical effect for suppliers and customers of the infringer.

7.3 What monetary remedies are available against a trade mark infringer (reasonable royalty, lost profits, account of profits, or some other basis)? Are punitive damages available? If so, under what conditions?

Monetary remedies are provided for in section 38 of the Trade Marks Act, according to which ‘anyone who intentionally or negligently has used a sign in violation of this Act, will be liable to pay the injured party compensation corresponding to a fair licence fee for the use, in addition to damages for further losses the use may have caused’. Additional loss not covered by the ‘fair licence fee’ (ie increase of costs, loss of past or future profit) is recoverable according to the alternative ‘compensation for further losses’ to the extent such loss can be proven. However, in court practice, there is a tendency to underestimate the total economic loss caused by an infringement, largely because of the difficulties inherent in documenting such loss.
Compensation may be reduced where the infringer is guilty of minor blame only. If the infringer has acted with care and in good faith, the court may measure out damages on a mere discretionary basis, ie ‘as it finds reasonable’.
Punitive damages are not available.

8. Preliminary Relief

8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?

Preliminary relief in the form of a preliminary injunction is available by motion to the competent district court, or, if the infringer resides or the infringement takes place in Oslo, the Oslo Court of Enforcement. At present, the conditions are set out in section 15–2 (see section 15–1) of the Claims Enforcement Act but, in the future, the provisions on preliminary injunctions will be incorporated in chapter 34 of the New Civil Procedure Act.
In order to obtain a preliminary injunction, the claimant must demonstrate the probability of his claim and of the necessity of a preliminary measure, ie he must substantiate a prima facie claim for infringement and that an injunction is necessary either because enforcement would otherwise be substantially hampered, or because the claimant would incur substantial loss or harm if an injunction is not granted. Section 15–2(2) sets forth an additional condition, namely that the court may only grant a preliminary injunction if it considers, on the balance of interests, that the loss or inconvenience of an injunction to the defendant is not obviously disproportionate to the right holder’s interest in such injunction. If it grants an injunction, the court will normally order the claimant to post a security for possible loss suffered by the defendant (see section 15–6(1), second sentence of the Claims Enforcement Act).
Preliminary injunctions may be enforced to stop the infringing activity as soon as the court order is served upon the defendant (see section 4–13 of the Claims Enforcement Act), regardless of whether the defendant appeals.

8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?

As a rule the court grants a preliminary injunction after an inter partes hearing. However, an ex parte injunction may be granted if there is a risk related to the delay or the notification. Upon notice of such injunction, the defendant may demand subsequent oral proceedings (see sections 15–7(2), 15–10 and 15–8 of the Claims Enforcement Act). It is unlikely that a Norwegian court would grant an ex parte injunction unless the trade mark holder can establish a strong prima facie case of infringement and a clear and urgent need for the injunction.

8.3 Is the plaintiff entitled to ask for an order that the defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?

No order similar to the saisie-contrefaçon is available under Norwegian law. However, if a piece of evidence would otherwise be difficult to obtain, it is possible to take oral testimony or inspect physical evidence before trial by court interrogation or inspection in accordance with chapter 20 of the Civil Procedure Act (see above 6.5).
Further, at least in theory, there is a possibility of obtaining evidence by having the Public Prosecution Authority conduct a seizure in accordance with the Criminal Procedure Act of 22 May 1981 no 25 section 203.

8.4 Can the defendant put the validity of a trade mark at issue in preliminary injunction proceedings?

It has traditionally been assumed in Norwegian patent and trade mark law that a defendant may not put validity at issue in preliminary injunction proceedings. However, after the Supreme Court’s ruling in Rt 2004.763, it has now been established that a defendant may put validity at issue in preliminary injunction proceedings regarding patents. It is likely that the Supreme Court’s decision will also cause a change in the view on the possibility for a defendant to put validity at issue in preliminary injunction proceedings as regards trade marks in the sense that if the court finds it likely that the trade mark registration is invalid, it will conclude that the plaintiff has not proven the probability of his infringement claim and will deny a preliminary injunction on that basis.

8.5 What is the format of preliminary injunction proceedings?

Preliminary injunction proceedings in the first instance will normally follow the same pattern as main proceedings, see above 6.1. The hearing of a preliminary injunction will usually be more summary and simplified than main proceedings.
An appeal against a preliminary injunction decision is normally handled in writing only, without oral hearings. Thus, this kind of appeal proceeding is adjudicated more simply and faster than appeal in main proceedings. The same goes for a possible third instance appeal.

8.6 To what extent are documents, affidavits, witnesses, survey evidence, and/or (court-appointed or private) experts used in preliminary injunction proceedings?

The rules on documents and witnesses set out in the Civil Procedure Act apply mutatis mutandis to preliminary injunction proceedings (see section 15–14 of the Claims Enforcement Act). However, the prohibition (set out in section197 of the Civil Procedure Act) against production of statements drafted in connection with the proceedings does not apply, meaning that such statements may be presented to the court if on a discretionary basis the court accepts such evidence.

8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?

The claimant must render his claim and the necessity of a preliminary injunction probable (see section 15-6(1), first sentence of the Claims Enforcement Act). Thus, infringement must be proven on a preponderance of the evidence.

8.8 How long do preliminary injunction proceedings typically last?

Generally speaking, a hearing is normally fixed within weeks after the filing of the application, and the entire preliminary injunction proceedings should not take more than one to three months from the application being filed. However, the proceedings may take longer due to the workload of the court or the complexity of the case.

8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?

It is necessary to start main proceedings in order to have a preliminary injunction confirmed as final and binding (rechtskraftig). This does not imply a mandatory duty upon the claimant to initiate such confirmation main proceedings. However, the court may in rulings granting a preliminary injunction set a time limit for the claimant to initiate main proceedings (see section 15–8(3) of the Claims Enforcement Act). If such time limit is set, the preliminary injunction will lapse if the claimant does not initiate main proceedings before its expiration (see section 15–12(1) b).

9. Appeal Procedure

9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?

In main proceedings on infringement or invalidity, the decision handed down will have the status of a judgment (dom). Such judgments can be appealed to a Court of Appeal and ultimately to the Supreme Court (see section 355(1); sections 3 no 1 and 6(1) of the Civil Procedure Act). The time limit for filing an appeal is one month (see section 360(1)). Generally, it is difficult to have a case tried in more than two instances, as only cases of principal significance are admitted to the Supreme Court.
In preliminary injunction proceedings, the decisions handed down will have the status of a ruling (kjennelse). Such rulings may be appealed from the first instance court to a Court of Appeal (see section 396 of the Civil Procedure Act; section 15–14(1), first sentence of the Claims Enforcement Act). A further appeal to a three-judge panel of the Supreme Court (the Kjæremålsutvalg) is possible, but only on matters of law and not on the facts (see section 404 of the Civil Procedure Act). The Kjæremålsutvalg has a wide discretion in summary adjudication of appeals without extensive reasoning (see sections 403a and 404(2) of the Civil Procedure Act).
The time limit for filing an appeal against a ruling is the same as for a judgment (see section 398(1)), ie one month from the service of the decision. As opposed to appeal proceedings on judgments, appeals regarding preliminary injunctions will normally be decided on the basis of written material, without oral proceedings.

9.2 How long do appeal proceedings typically last?

The duration of second instance appeal proceedings in trade mark matters will vary depending on the workload of the Court of Appeal in question. The format of the procedure itself will typically be less than the first instance, as all the evidence filed there will be part of the documentation before the Court of Appeal. However, some Courts of Appeal have quite long delays for fixing the hearing, which may take place 12–18 months after the appeal is filed with an additional month or two before a judgment is handed down.
If a Supreme Court appeal is admitted, the duration of such proceedings will typically be six to 12 months.
Appeal proceedings relating to a preliminary injunction are faster as they normally do not require a court hearing and will regularly be handled within three to six months.

10. Litigation Costs

10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?

The level of costs will depend on the complexity of the case. Typically, one party’s costs towards legal representation in main proceedings (including pre-trial preparations) in trade mark disputes in one court instance might range from NOK 50-200,000 upwards to ten times this amount in exceptional cases.

10.2 Are costs recoverable from the losing party?

As a rule, costs including attorneys’ and experts’ fees are recoverable from the losing party if the winning party has succeeded on all his claims (including the level of monetary remedies) (see section 172 of the Civil Procedure Act). Since section 176 provides that only ‘necessary’ costs may be recovered and this provision is interpreted in a rather strict manner, in complicated matters the victorious party will very often recover only part (eg 50-75 per cent) of the legal costs incurred.
If the outcome has been doubtful, new evidence has been revealed during the proceedings or the winning party is to blame for the case coming to court, the court may on a discretionary basis decide not to award costs to the victorious party. Further, if the alleged infringer approves the claim(s) immediately after an action is initiated, the claimant must cover the costs of the losing party as the lawsuit was unnecessary (see section 173 of the Civil Procedure Act).
By and large, the same rules apply for appeals and preliminary injunction proceedings (see section 180 of the Civil Procedure Act and sections 3-4 of the Claims Enforcement Act). However, the court will often leave the cost issue of the preliminary injunctions to the main proceedings.

11. Forthcoming legislation

11.1 What are the important developing and emerging trends in your country’s trade mark law?

As described in 5.3 above, amendments to the Customs Act have recently been implemented allowing for ex officio action from the customs authorities against infringing goods. This, along with recent statements by the government about adopting parts of the EU Enforcement Directive (Directive 2004/48/EC), can be seen as parts of a general trend towards more effective enforcement of trade mark rights in Norway.
Another trend in Norwegian trade mark law is that the courts tend to attach ever increasing importance to rulings and decisions from the European Court of Justice and other EU organs in trade mark matters.

11.2 To the extent it relates to trade mark enforcement, please outline any major trade mark legislation in the pipeline.

A new Trade Marks Act is in the pipeline, and has been so for some years now. It is not clear when a definite legislative proposal can be expected. One of the main intentions behind the work with the new Trade Marks Act has been to achieve a large extent of harmonisation between the trade mark acts in the Nordic countries.
With respect to the EU Enforcement Directive (Directive 2004/48/EC), the government’s view has been that this is not covered by the EEA Agreement and therefore is not relevant for Norway. However, as stated above, there appears to be an initiative to adopt at least certain parts of the directive (the non-procedural provisions).

12. Useful references

12.1 Please identify any useful works of reference relating to trade mark law and trade mark litigation in your country, including useful websites.

The most central general work on Norwegian trade mark law is Are Stenvik and Birger Stuevold Lassen, Oversikt over Norsk varemerkerett, (‘Overview of Norwegian trade mark law’) (Revised second edition Oslo, 2003).
Another useful reference is the website of the Norwegian Patent Office, with information in English, at www.patentstyret.no.