Norwegian Trademark Refusals: How to Respond to NIPO and Appeal a Refusal

A trademark refusal from the Norwegian Industrial Property Office (NIPO, Norwegian: Patentstyret) does not necessarily prevent the mark from being protected in Norway. Applicants are given an opportunity to respond before NIPO makes a final decision. Depending on the objection, the response may involve legal arguments, evidence, amendments to the list of goods and services, or measures addressing an earlier right, such as a letter of consent from its owner.

For international trademark owners and their counsel, understanding this process can be important when deciding how to respond and how far to pursue an application.

The initial refusal

If the NIPO identifies grounds preventing registration, it will issue a provisional refusal explaining the objections and setting a deadline for response. For international registrations designating Norway under the Madrid System, this is communicated through WIPO.

Objections may concern, among other things, lack of distinctiveness, descriptiveness, conflicts with earlier rights or the specification of goods and services.

Unlike the EUIPO, the NIPO examines conflicts with earlier registered trademarks and applications of its own motion. A refusal based on an earlier right can therefore arise even though the owner of that right has taken no action. Such an objection may be addressed by argument on the similarity of the marks or of the goods and services, by limiting the specification, by obtaining a letter of consent from the owner of the earlier right or, where the earlier mark has not been used for five years, by challenging it for non-use through administrative review. The status, expiry date and ownership of the cited mark should also be checked, as an earlier right that has lapsed or is about to lapse may no longer stand in the way.

A refusal at this stage is not a final decision. The applicant may submit observations, supporting evidence and amendments that narrow or clarify the specification.

The response deadline is stated in the provisional refusal. The applicable deadline should be checked immediately. Several extensions are typically available, but must be requested before the existing deadline expires. A missed deadline is not necessarily fatal, however. A case that has been shelved because no response was filed is reinstated if the applicant responds within two months after the deadline expired and pays a fee. This can be done only once.

A refusal may apply to all or only some of the goods and services. In a partial refusal, the applicant should consider whether to contest the objection, limit the specification, accept protection for the unobjectionable goods and services, or divide the application so that the accepted goods and services can proceed to registration while the refused part is pursued further. A specification may be narrowed, but goods or services cannot be added after filing.

Dividing the application after a partial refusal

Division (deling) may be a practical response to a partial refusal. The accepted goods and services are separated from those that have been refused, so that the accepted part can proceed to registration while prosecution of the refused part continues, including any further response, appeal or court proceedings. The applicant secures registered protection for the uncontested part of the specification without abandoning the rest. This may be important when registration is needed for enforcement or as a basis for other filings, for example. The divided applications keep the original filing date and any priority claim.

Division is available both for national applications and for international registrations designating Norway. A fee is payable for each new application or registration created by the division; NOK 3 800 for the first class, NOK 1 000 for each additional class.

The first response

The first response is normally the main opportunity to address the NIPO’s objections in detail.

The appropriate approach depends on the grounds for refusal. In some cases, relatively straightforward amendments may resolve the objection. In others, substantive legal argument or supporting evidence may be required. Where the objection is lack of distinctiveness, evidence that the mark has acquired distinctiveness through use in Norway may also be submitted.

Following the response, the application is reconsidered by the NIPO.

If the objections have been overcome, the application may proceed to registration. If the NIPO maintains one or more objections, it will normally issue a further office action.

A further office action and response

An important feature of Norwegian examination practice is that a different examiner typically reviews the case at each stage. An application may therefore be considered by three different examiners before a final refusal is issued.

This makes the second response more than a procedural formality: the principal arguments receive a fresh assessment.

A further response should address the objections and reasoning that remain material at that stage. It may refer back to arguments and evidence already on file, but any new reasoning or factual premise raised by the NIPO should be answered expressly. The appropriate level of detail therefore depends on the content of the further office action.

If the objections are overcome following this further review, the application can proceed to registration. Otherwise, the NIPO may issue a final decision refusing the application wholly or partly.

Appeal to the Board of Appeal (KFIR)

If a final decision upholding the refusal is issued, the decision may be appealed to the Norwegian Board of Appeal for Industrial Property Rights (KFIR, Norwegian: Klagenemnda for industrielle rettigheter). The appeal may concern a refusal of the application in whole or in part and must satisfy the applicable filing, reasoning and fee requirements. The official fee is NOK 4 400.

The KFIR is an independent administrative appellate body specialising in industrial property matters. It reviews the appealed decision outside NIPO and may assess the legal and factual basis for the refusal within the scope of the appeal.

The appeal must be filed within two months of the date on which the final decision was sent, and an appeal fee applies. Missing the deadline or failing to satisfy the formal requirements may result in the appeal being rejected. The prospects, cost and commercial value of the case should therefore be assessed before the deadline, rather than after it.

Whether an appeal is worthwhile will depend on the grounds for refusal, the reasoning in the NIPO’s decision, the commercial importance of the application and the prospects of obtaining a different outcome.

Review by the courts

A decision by the KFIR that upholds a refusal may be appealed to the courts by bringing an action against the State, represented by KFIR, within two months of the date on which the decision was sent. The deadline is absolute. The court reviews whether the decision is correct, including the assessment of distinctiveness or likelihood of confusion, but as a rule on the basis of the facts as they stood when KFIR made its decision. Court proceedings are therefore not simply an additional round of examination in which new evidence can be introduced freely.

Proceedings for judicial review of such KFIR decisions must be brought before Oslo District Court, which is the compulsory venue for this category of action.

Court proceedings are therefore the final stage of a process that may begin with an ordinary examination objection at the NIPO.

The process at a glance

After an applicant response, registration or partial registration can be an outcome. Alternatively, a further office action returns to the response stage, or a final refusal may lead to an appeal where available. A Board of Appeal decision may be followed by judicial review.

1. NIPO examination
2. Office action / provisional refusal
3. Applicant response

Successful outcomes

• Registration
• Partial registration With or without division

Further examination or refusal

Further office action Return to applicant response

or

1. Final refusal
2. Appeal to the BoA (KFIR) Where available
3. BoA (KFIR) decision
4. Possible judicial review Oslo District Court

Many applications do not pass through all of these stages. Registration or partial registration may follow after a response, while some cases proceed to a further office action or a final decision. The course of the case depends on the objection, the applicant’s response and any amendments or evidence submitted.

Frequently asked questions

How long do I have to respond to a Norwegian trademark refusal?

Three months from the date of the refusal. The deadline is stated in the NIPO’s letter or, for an international registration, in the provisional refusal communicated through WIPO. An extension must normally be requested before the deadline expires. If the deadline is missed, the case can be reinstated once, for national applications and international registrations alike, if the response is filed within two months after the deadline and a fee is paid.

Can the mark be registered for the accepted goods and services while the rest is contested?

Yes. By dividing the application, the accepted goods and services can proceed to registration while the refused part continues through further examination, appeal or court proceedings. Division is available for national applications and for international registrations designating Norway.

Does the NIPO examine conflicts with earlier trademarks?

Yes. Unlike the EUIPO, the NIPO examines earlier registered trademarks and applications of its own motion. Such objections can be overcome by argument, by limiting the specification, by a letter of consent from the owner of the earlier right, or by challenging an unused earlier mark through administrative review.

Can the mark be amended to overcome a refusal?

The specification of goods and services can be narrowed or clarified, but goods and services cannot be added. A material change to the mark itself will require a new application.

What happens if the KFIR upholds the refusal?

The applicant can bring an action against the State, represented by KFIR, before Oslo District Court within two months of the date on which the decision was sent. The deadline is absolute.