Norwegian Trademark Disputes: Oppositions, Administrative Review and Court Proceedings

Trademark disputes in Norway may be resolved through opposition or administrative review before the Norwegian Industrial Property Office (NIPO, Norwegian: Patentstyret) and the Norwegian Board of Appeal for Industrial Property Rights (KFIR, Norwegian: Klagenemnda for industrielle rettigheter), or through proceedings before the Norwegian courts. The appropriate route depends on the registration status, the legal grounds, the commercial conduct in dispute and the remedies required.

Proceedings before the NIPO address the registration and the grounds on which it may be challenged, while court proceedings may also determine infringement and grant remedies unavailable in administrative proceedings.

In brief, opposition (innsigelse) is available for three months from publication of the registration and is primarily used to challenge a newly registered trademark. Administrative review (administrativ overprøving) is available after that period to seek invalidation or cancellation of an existing registration. Court proceedings may be required where the dispute concerns infringement, urgent relief or monetary claims, and invalidity or revocation may also be sought before the courts. NIPO decisions in opposition and administrative-review cases can be appealed to the KFIR within two months.

The sections below lay out what each route can achieve, the principal procedural constraints and the strategic factors that may favour one route—or a negotiated solution—over another.

Trademark opposition in Norway (innsigelse)

An opposition must be filed with the NIPO within three months from the date on which the registration is published. Opposition is also available against international registrations that have been granted protection in Norway; for these, the period runs from the NIPO’s publication of the protection in Norway.

An opposition may be based on earlier rights, such as registered trademarks, established unregistered trademarks (innarbeidede varemerker) and company names, on lack of distinctiveness, on bad faith or on other grounds on which the trademark should not have been registered. Depending on the grounds and circumstances, the opponent may seek to have the registration set aside wholly or partly or may claim that it should be transferred to the person properly entitled to it.

The principal advantage of opposition is that it provides a relatively streamlined administrative mechanism for challenging a newly registered trademark. There is no official fee for filing an opposition.

The obvious limitation of opposition is timing: once the three-month opposition period has expired, another route must normally be considered.

Where an opposition or invalidity claim relies on an earlier registered trademark that has been registered long enough to be subject to the use requirement, the holder of the challenged registration may require proof of genuine use of the earlier mark. In opposition, the relevant period is the five years preceding the filing or priority date of the challenged mark. In administrative review and invalidity proceedings, the claimant may have to document use for two periods: the five years preceding the claim, and the five years preceding the filing or priority date of the challenged mark. Non-use can also provide an independent ground for revocation through administrative review or court proceedings. The evidential position should therefore be assessed before the procedure and grounds are selected.

The parties must bear their own costs in opposition proceedings. The successful party cannot recover its legal costs from the other party.

The NIPO may reject the opposition, set the registration aside wholly or partly, or in appropriate cases transfer the registration. Its decision can be appealed to the KFIR within two months.

Administrative review (administrativ overprøving)

Expiry of the opposition period does not necessarily mean that a trademark registration can only be challenged through the courts.

A registered Norwegian trademark may also be challenged through administrative review before the NIPO. Depending on the grounds, the claimant may seek a declaration of invalidity because the registration should not have been granted, or revocation because subsequent circumstances—such as non-use or the mark becoming generic or misleading—mean that the registration should no longer remain in force.

Administrative review is intended to provide a simpler and less expensive alternative to court proceedings where the dispute concerns whether the registration should remain in force. The official fee for a request for administrative review is NOK 4,000.

Administrative review is not simply a late opposition. The claimant must have a legal interest (rettslig interesse) in the matter, and a request cannot be made before the opposition period has expired. If an opposition has been filed, administrative review must await the final determination of the opposition proceedings.

Unlike in opposition proceedings, costs may be awarded in administrative review. A party that succeeds entirely or substantially may recover necessary costs, but an award is discretionary rather than automatic. The assessment may include whether there was good reason to have the matter determined and whether imposing liability is reasonable in light of the nature of the case and the circumstances of the parties. A claimant should normally contact the holder and request a voluntary solution before commencing proceedings; failure to do so without good reason may count against an award of costs.

There are, however, important limitations.

Administrative review determines whether the registration remains effective, but it cannot provide remedies directed at infringing commercial activity.

There are also procedural restrictions on the interaction between administrative review and court proceedings. Administrative review cannot be requested while an action for invalidity or revocation is pending before the courts, and a party that has requested administrative review cannot bring such an action while the case is pending before the NIPO. In addition, a claimant who loses before KFIR cannot appeal that decision to the courts (see below). The choice of forum should therefore be considered before proceedings are commenced rather than treated as interchangeable procedural alternatives.

Defending a challenged registration

A holder facing an opposition or a claim for administrative review is not limited to rebutting the claimant’s arguments. Where the challenge is based on an earlier trademark that has been registered for at least five years, the holder may require the claimant to prove genuine use of it, both in opposition and in administrative review. In administrative review, the holder may also show that the challenged mark had acquired distinctiveness through use by the date of the claim, argue that the earlier mark lacked distinctiveness or reputation at the filing or priority date of the challenged mark, or rely on the passivity rule where the claimant has known of and accepted use of the registered mark in Norway for five consecutive years and the holder acted in good faith when filing.

These defences should be raised alongside, not instead of, a response on the merits. If the holder relies only on non-use and the claimant documents use, the claimant’s other grounds stand unanswered.

Appeals from NIPO decisions to the KFIR

The NIPO’s decisions in opposition and administrative-review proceedings can be appealed to the KFIR. The appeal must be filed within two months of the date on which the decision was sent to the parties, and an appeal fee applies.

The KFIR provides specialist administrative review of intellectual property decisions. Its role remains concerned with the registration and the issues that fall within the relevant administrative procedure.

A KFIR decision can be brought before the courts only by the party it has gone against, in practice the holder of a registration that has been set aside, invalidated or revoked. The action is brought against the State, represented by KFIR, before Oslo District Court, and must be filed within two months of the date on which the decision was sent. The deadline is absolute. An opponent or administrative-review claimant who has not succeeded before KFIR cannot bring the decision before the courts, and decisions on transfer of a registration cannot be brought before the courts by either party. An unsuccessful claimant must instead consider a separate invalidity action against the holder, which makes the initial choice between administrative and court proceedings more significant than it may first appear.

Trademark litigation before the Norwegian courts

Court proceedings provide a considerably broader framework for resolving trademark disputes.

They may be necessary where the dispute concerns infringement rather than merely the validity of a registration, or where a party requires remedies that cannot be obtained through proceedings before the NIPO.

Depending on the case, court proceedings may concern issues such as infringement, cancellation of a trademark through an invalidity action, entitlement to rights, prohibitory relief and monetary claims.

Where infringement is established, the court may prohibit continued infringement and order the infringing goods to be recalled, altered or destroyed. For intentional or negligent infringement, compensation may be calculated as a reasonable licence fee together with compensation for further loss, as compensation for the rights holder’s loss, or by reference to the infringer’s profit. Where the infringement is intentional or grossly negligent, the rights holder may instead claim twice a reasonable licence fee.

Court proceedings may also be necessary where urgent measures are required to prevent continued or imminent infringement. A preliminary injunction (midlertidig forføyning) can be obtained at short notice, in urgent cases without the other party first being heard. However, if the injunction later proves unjustified, the party that obtained it is liable for the resulting loss regardless of fault, so the strength of the case should be assessed carefully before applying.

The principal advantages of litigation are therefore the breadth of issues that can be determined and the remedies available. The corresponding disadvantages are greater procedural complexity, higher costs and greater exposure to adverse costs.

Before bringing an action, the claimant must normally notify the other party in writing of the claim and its basis, and give it an opportunity to respond. Failure to do so may count against the claimant when costs are decided.

Which route is appropriate?

The appropriate procedure depends on the commercial objective, the status of the disputed trademark and the remedies required. The first questions are whether the mark has recently been registered, whether the dispute concerns the continued validity of the registration or use in the market, and whether urgent or monetary relief is needed.

If the problem is a recently registered trademark that should not have been registered, opposition may provide an efficient route.

If the opposition period has expired and the principal objective is to remove or restrict an existing registration, administrative review may be appropriate.

If the problem is ongoing use of a sign in the market and the client needs that use to stop, setting aside, invalidating or revoking the opposing party’s registration may not be sufficient. Those outcomes determine whether, and in some cases from what time, the registration remains effective; they do not by themselves provide the full range of remedies available in infringement proceedings. Court proceedings, or a strategy addressing both the registration and infringement, may therefore be required.

Other factors include urgency, evidential complexity, costs, the commercial relationship between the parties and whether parallel or anticipated proceedings affect the available procedural options. A claimant should also bear in mind that, if the administrative route is chosen and fails before KFIR, the decision cannot be challenged in court by the claimant.

Negotiated solutions

Adversarial proceedings are not always necessary. Depending on the parties’ objectives and commercial relationship, a trademark dispute may be resolved through negotiation, including by agreement on coexistence, limitations on use or the specification of goods and services, transfer of rights, withdrawal or surrender of an application or registration, or an agreed transition period. Any settlement should address the relevant registrations and applications, permitted use, territory, goods and services, implementation steps and the consequences of breach.

Where the parties negotiate during an opposition and file a joint request, the NIPO must postpone the proceedings for at least two months. In administrative review, deadlines can be extended on a joint request, and the parties can settle and close the case before a decision is made.

Early engagement may reduce costs and preserve commercial flexibility, particularly where the dispute can be resolved by narrowing the practical area of conflict rather than removing a registration entirely. The possibility of settlement should therefore be assessed alongside opposition, administrative review and court proceedings.

More than one issue — and sometimes more than one route

Trademark disputes frequently involve more than the validity of a registration.

A conflict may involve an allegedly invalid registration, use of the disputed sign in the market, claims based on other intellectual property rights or Norwegian unfair-competition law, and negotiations concerning coexistence or transfer of rights.

The appropriate strategy therefore starts with identifying the client’s commercial objective rather than simply selecting the first available procedure.

Frequently asked questions

How long do I have to oppose a Norwegian trademark registration?

Three months from the date on which the NIPO publishes the registration. For international registrations, the period runs from the NIPO’s publication of the protection in Norway. After that, the registration can be challenged by administrative review or before the courts.

What does it cost to challenge a Norwegian trademark registration?

Filing an opposition is free, and each party bears its own costs. A request for administrative review carries an official fee of NOK 4,000, and the losing party may be ordered to pay the other party’s necessary costs. In court proceedings, court fees apply and, as a main rule, the losing party pays the successful party’s legal costs.

Does the earlier trademark have to be in use?

If the earlier registered trademark has been registered for at least five years, the holder of the challenged registration can require proof of genuine use. If use cannot be documented and there is no proper reason for non-use, a challenge based on that trademark fails.

Can a KFIR decision be brought before the courts?

Only by the party the decision has gone against, in practice the holder of a registration that has been set aside, invalidated or revoked. The action must be brought before Oslo District Court within two months. An unsuccessful opponent or administrative-review claimant cannot bring the decision before the courts.

Will cancelling the other party’s registration stop them using the mark?

Not by itself. Setting aside, invalidating or revoking a registration affects the register, not the use. Stopping use in the market requires an infringement claim, a preliminary injunction or a negotiated undertaking.

Do all Norwegian trademark disputes require court proceedings?

No. A newly registered trademark may be challenged by opposition before the NIPO, while an existing registration may, in appropriate circumstances, be challenged through administrative review. Court proceedings may be necessary where the dispute concerns infringement, urgent measures, monetary claims or other remedies that the NIPO cannot grant, but negotiated solutions should also be considered.