Appeal Options - design

There are options for complaining in the various phases of case handling.

How can you complain to the Norwegian Industrial Property Office?

A protest is a complaint that comes to the Norwegian Industrial Property Office (NIPO) from a third party during the application processing. An administrative review is a complaint that comes in after the design has been registered. The person who delivers a protest will not formally be a party to the case, but upon filing a request for administrative review, you become a party to the case.

Protest

A protest is an objection to the registration of a design. For example, you have discovered that someone has applied for design registration for a design that you think is not eligible, or someone is applying for design registration that you believe is too close to your own design.

When and how can you file a protest?

You can file a protest against an application up until the processing of the trademark application has been completed. If the protest is delivered after the design is registered, we will treat the protest as a request for administrative review. (See below about this).

The protest must be submitted in writing and be justified. The NIPO will assess the protest and decide if it affects the processing of the application or not.

The applicant will be notified that a protest has been lodged. The person who has filed a protest will receive a letter that the protest has been received.

If the design is refused registered, the NIPO does not notify the person protesting against the design application. If the design is registered, the protester will be informed of this, with information about the opportunity to request for administrative review. (See below about this).

Administrative review

If you believe that the Norwegian Industrial Property Office (NIPO) has registered a design on an incorrect basis, you can complain against this by submitting a request for an "administrative review" to us. The administrative review procedure is a quick, simple and cheap alternative to court actions. It applies to both national and international design registrations that are valid in Norway.

Administrative review applies in two situations

  • If you believe that a registered design is not valid, for example because the design is not new, or because it does not differ sufficiently from other, earlier designs, you can request that that the design registration be cancelled (entirely or partially).
  • If you believe that a design has been registered by a person or an enterprise that does not have the right to do so, you can request that the design be wholly or partially transferred to the correct holder (administrative transfer).

How do you request an administrative review?

You must submit the request in writing to the NIPO. The request must contain:

  1. name and address of the complainant, and name and address of attorney if you are using one
  2. the registration number of the design, and which design or designs in the registration are the subject of the complaint (if more than one)
  3. on what grounds the complaint is based
  4. necessary documentation in support of the complaint
  5. power of attorney in the use of an attorney, if the attorney is not a lawyer or trainee lawyer

When can you submit the request?

If you believe that the NIPO has registered a design that is invalid, you may submit a complaint against this no later than one year after you learnt of the registration. You cannot complain later than three years after the design was registered or transferred, if the holder was acting in good faith when this took place.

If you believe that you have a better right to the design than whoever is listed as applicant/holder, you can ask the NIPO to transfer the design to you. You can do this as long as the design registration exists, and also after the design registration has ceased (but whoever presents the request must then have a "legal interest" in the case). You cannot request transfer of the design if a case concerning the same design is already under consideration by the courts.

How is an administrative review processed by the NIPO?

If the complaint you lodge does not fulfil the formal requirements, the NIPO will set a time limit for you to rectify the deficiencies. If you do not rectify the deficiencies within this time, we will reject the request.

When the formal conditions for the complaint are met, we will send the complaint to the holder of the design registration with a time limit of one month in which to express an opinion.

The parties will normally be given an opportunity to express an opinion twice each. The actual complaint is counted as your first statement of opinion. If you are prevented from replying within the time limit, you may ask for an extension. When we consider there to be sufficient information on the case, the case officer at the NIPO will take up the case for a decision within 2 months.

When the complaint concerning the design is to be decided upon, a new and independent assessment will be made by a different case officer than the one who was the case officer at the time when the design was registered.

The complaint case can have the following outcomes:

  • The design is declared completely invalid (is cancelled) or partially invalid (maintained in amended form)
  • The complain is rejected, and the design registration is maintained unchanged
  • The design is completely or partially transferred to a different holder

Possible grounds for the complaint

To cancel a right wholly or partially, the complaint may be based on the design:

  • not being a design within the meaning of the law
  • not fulfilling the requirement for novelty and individual character
  • not being visible during normal use of the project
  • contravening public order or morals
  • without authorisation containing a coat of arms or symbol (for example national coat of arms or state flag)
  • clashes with a design in a previous application (which was not publicly available at the time when the new application was submitted). This is conditional on the earliest application being published later.
  • contravenes the right of another in Norway, for example to a trademark or creative work
  • is determined solely by technical function

If you believe that a design right has an incorrect holder, you can write why you believe that the design right should have belonged to someone else.

Tips on documentation in cases of administrative review

The NIPO will take into account all relevant documentation submitted in the complaint.

If you request complete or partial transferance of the right due to an incorrect holder of the application/registration, you must prove that you yourself have a better right to the design than the person listed as applicant or holder.

If you believe that the design is not novel or does not have individual character, you must prove that a design giving the same overall impression as the registered design was published before the application date. You must present good, dated documentation which is clearly linked to the appearance of the design. This may, for example, be:

  • applications for design, trademark or patent
  • registered designs and trademarks and granted patents
  • pictures bearing a dated stamp from a notary or similar
  • business agreements
  • brochures and advertising material
  • newspapers and magazines

If pictures from the internet are not dated, you can, in addition, refer to a dated discussion of the product clearly showing that the product concerned was published before the application date. Dated printouts form the internet will generally not be deemed to be sufficient documentation. This is because dates on printouts can be easily manipulated or added afterwards.

In practice, it has been found that it may be challenging to gather sufficient clear and dated evidence. To find previously published material, it may be useful to use archive services such as Wayback Machine https://archive.org/web/ or other similar tools.

If you submit film as evidence, you should take stills from the film to show specifically which product you believe to be a similar or identical design.

How much does a request for administrative review cost?

When the NIPO receives a complaint (a request for administrative review), we send an invoice to the person who has submitted the complaint (see price list). You must pay a fee before we process the case.

If the NIPO rejects the request, we repay half the amount.

Other complaint procedures

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