Legal costs

In order to ensure that the system of administrative review becomes an effective alternative to court proceedings, the Norwegian Industrial Property Office (NIPO) has been allowed to award a party who has been successful in a request for administrative review legal costs from the other party.

When does the scheme apply?

The scheme only applies to administrative review under the Trademarks Act and the Patents Act.

According to the Norwegian Industrial Property Office Act, a party that has been entirely or substantially successful can be awarded the necessary legal costs from the other party. This is a can-rule, so that the party who has been fully or essentially successful does not automatically have a claim to cover legal costs. Whether costs are to be awarded is decided after an assessment where, among other things, emphasis is placed on whether there was good reason to have the case tried because it was doubtful, and whether it is reasonable based on the type of case and the circumstances of the other party to impose responsibility for costs.

Administrative review in matters relating to design and company name

Legal costs in appeals in these fields can only be awarded by The Norwegian Board of Appeal for Industrial Property Rights, KFIR. This is because there is no prior examination of all the registration conditions in these areas, and that important registration conditions are thus only considered when an administrative review is required

What costs are covered by the scheme?

It is only necessary costs that can be awarded, that is, costs that appear reasonable to protect the party's interests in the case. When determining responsibility for costs, NIPO and KFIR must consider that administrative review should be a simple and reasonable alternative to court proceedings.

When must you submit the claim for reimbursement of legal costs?

You must submit this claim before the case is decided because NIPO must decide the issue of legal costs at the same time as the merits of the case. Towards the end of the proceedings, we will send a separate letter to the parties in which we give a deadline for submitting claims for legal costs.

Contact between the parties

We believe it is reasonable for the claimant to contact the proprietor with a request to delete the proprietor's registration before the claim is submitted to NIPO. If the claimant has not made such contact without any good justification for this, a claim for legal costs could appear unreasonable. This could mean that legal costs will not be awarded.

Costs for documentation regarding non-use

NIPO has previously encouraged claimants to document their claim of non-use. Based on what appears under the section "Burden of proof", such documentation will no longer be necessary. This change in practice means that costs associated with obtaining such documentation (user surveys etc.) will not be perceived as a reasonable expense that can be claimed by the other party. This change will cover all such costs incurred after 1 November 2013.

The statement of case costs

The statement must disclose in detail which costs have been incurred, including the number of hours and the hourly price that is used as a basis for the calculated cost. 

On 1 July 2001, VAT was introduced on legal services. The grounds for charging VAT must be stated where the party concerned is not registered as liable for VAT (consumers). The value added tax represents an additional expense that the lawyer must include in the task in order for him to be able to demand that it be covered by the other party. For registered traders who can claim a deduction for input tax, this tax cannot be claimed to be covered as legal costs. The fee will not represent an expense and must therefore not be stated in the thesis. In such cases, the costs must be stated ex VAT.

For private parties representing themselves, there will be no VAT, and so VAT should therefore not be included in the statement. 

Examples of clarification of possible costs

This list is not exhaustive:

  • consulting and contact with the client
  • work related to possible negotiations on consent/deletion
  • work with the preparation of requirements and responses
  • work with possible later argumentation
  • work with submission of the cost claim
  • disbursement to NIPO
  • estimated time for follow-up work, including receipt and reporting of the decision (assessment of whether a complaint should be submitted to the KFIR falls outside the scope and is seen as an expense in connection with the complaint case)
  • possible other costs

It is important to point out that only "necessary" costs can be claimed from the other party.

In this assessment, emphasis will be placed on the fact that the system of administrative review is intended to be a simple and cheap alternative to court proceedings. This entails greater requirements for efficiency and reasonableness. It is therefore assumed that the cost requirements will be considerably lower. It is up to the submitter of the claim to assess whether the cost statement needs explanation or elaboration.

Example of the design of the assignment

Specification Time consumption and hourly price Cost
Advice and contact with the client 1 hour, hourly rate NOK 1,800 NOK 1,800
Work related to possible negotiation about consent / erasure
Preparation of requirements / responses
Later correspondence
Value Added Tax (if required)

Recovery of legal costs

NIPO is not responsible for the recovery of legal costs. The party that has been successful in its claim for coverage of its legal costs must itself contact the other party to transfer the amount that has been awarded. If a party does not fulfill the claim voluntarily, the costs of the case can be collected by compulsion according to the rules for judgments, see § 9 last paragraph of the Industrial Property Office Act.

Appeal against the decision

The decision on the award of legal costs can be appealed to KFIR.