Appeal Options - trademarks
- Administrative review
- Appeal against decisions made by NIPO
- When can you appeal to the courts?
- Administrative transfer
A protest is a complaint that comes to the Norwegian Industrial Property Office (NIPO) from a third party during the application processing. An objection is a complaint that comes in after the mark is registered. The person who delivers a protest will not formally be a party to the case, but upon filing an objection, you become a party to the case.
A protest is an objection to the registration of a trademark. For example, you have discovered that someone is applying for a trademark that you think is a descriptive term that should be kept free for anyone to use, or someone is applying for a trademark that you believe is too close to your own registered or incorporated brand.
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 trademark is registered, we will treat the protest as an objection to the registration. 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 mark is refused registered, the NIPO does not notify the person protesting against the trademark application. If the mark is registered, the protester will be informed of this, with information about the opportunity to file an objection. See more about objection below.
Anyone who believes that a trademark has been registered on an incorrect basis can submit an objection. The objection must be submitted in writing to the NIPO .
Time limit for complaint
The time limit for submitting an objection is three months from the day when the registration was published. The objection may lead to the registration being wholly or partially cancelled.
What you can complain against:
That a trademark that has been applied for or registered:
- is liable to be confused with the rights of others (Section 16b)
- lacks distinctive character (Section 14)
- contravenes law, public order or morals (Section 15a)
- is likely to mislead (Section 15b)
- contains coat of arms or other symbols/flag without authorisation from the proper authority (Section 15c)
- contains a geographical origin for wine or spirirs (Section 15b)
- the trademark has an incorrect holder (Section 21 and Section 28)
How should you present an objection?
You must submit the request in writing to the NIPO. The request must contain:
- name and address of the person objecting and name and address of the attorney if you are using one
- the registration number of the trademark
- the basis of the complaint
- information about which goods and services the objection applies to, or which goods and services are unaffected by the objection, if the registration is requested only partially canceled.
- necessary documentation in support of the complaint
- power of attorney if an attorney is being used, if the attorney is not a lawyer or trainee lawyer
How does the NIPO process an objection?
If the request you submit does not fulfil the formal conditions, we will set you a time limit 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 request are met, we will send the request to the holder of the trademark registration with a time limit of one month in which they can express an opinion.
When the holder has replied, we will assess whether further statements by the parties are necessary. The actual request for review 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 that we have received sufficient information concerning the case, the case officer will take up the case for a decision within 2 months.
When making a decision concerning the complaint, a new and independent assessment will be made by a different case officer than the one who registered the trademark.
Possible outcomes of the complaint
- The trademark is declared completely invalid (is cancelled) or partially invalid (maintained with a limited list of goods)
- The complaint is rejected, and the trademark registration is maintained unchanged
- The trademark is transferred to the correct holder. Read more about transfer
How much does it cost?
You may submit an objection free of charge. The NIPO does not take payment for processing objection cases.
After the time limit for objections has elapsed, you can no longer submit an objection, but you can still appeal by submitting a written request for administrative review of the trademark registration. Administrative review can be used to complain against the points under "Objection" and in addition that a mark:
- has degenerated (Section 36)
- has not been used according to the rules on duty of use (Section 37)
The administrative review procedure is a quick, simple and cheap alternative to court action. It applies to both national and international trademarks registrations that are valid in Norway.
Time limit for complaint
Requests for administrative review can be submitted when the time limit for objections has passed (three months after the publishing of the registration), and after any objection cases have been finally decided. You can not request review as long as a lawsuit in court is not legally binding. A party which has previously brought a case before the courts concerning validity or rejection of a trademark cannot submit a request for administrative review if the results on legal effect prevent doing so. Requests can be submitted by anyone with a legal interest.
How do you present a request for an administrative review?
The same rules apply as for objection. See the rules above.
How does the NIPO handle an administrative review?
Case handling should go relatively fast, and the case will normally be taken up for decision after we have received a statement from the holder of the trademark. We have the following time limits:
- The holder of the trademark is given a time limit of one month in which to present a statement.
- If we consider further statements to be necessary in the case, the parties will be given a time limit of 14 days in which to respond.
- We do not usually grant time limit extensions unless there are reasonable grounds or consent from the other party. If there are reasonable grounds for doing so, we grant a time limit extension of 14 days. It must be apparent from the consent how long a time limit the parties wish to have. It is sufficient for a consent to be sent to the NIPO in the form of an email.
- If there are deficiencies in the request, the requester will be given a time limit of 14 days in which to rectify the deficiency.
- We grant longer time limits (five to six weeks) in connection with the holiday periods or periods containing public holidays.
- If there are no reasonable grounds for a time limit extension or consent has not been obtained, the case will be decided on the basis of the information at our disposal.
- We normally make a decision within two to three months.
How much does it 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.
You can appeal against NIPO decisions in both national and international cases. The Norwegian Board of Appeal for Industrial Property Rights (KFIR) will consider the appeal. You should send your appeal to the NIPO, which will forward it to KFIR.
You can appeal in these situations:
- You disagree with a rejection by the NIPO of a national or international application.
- An objection has not been upheld.
- An administrative review has not been upheld.
- The NIPO's decision to reject or cancel a registration.
- You disagree with the decision: The NIPO has decided to cancel a registration at its own discretion due to an evident error or conflict of priority.
- You disagree with the refusal or rejection: The NIPO has rejected or refused a case concerning resumption, exemption from publication, access to documents, renewal of a trademark registration, change of a trademark or a case being considered despite the time limit having been exceeded.
Time limit for appeals
The time limit is two months from the day on which the NIPO sent the decision to you. You should submit your appeal to the NIPO. If it is clear that the appeal will succeed, the NIPO has the option of cancelling or amending its decision. In the opposite case, we will forward the appeal to the Norwegian Board of Appeal for Industrial Property Rights (KFIR).
You can appeal decisions of KFIR to Oslo District Court. If you have presented a request for administrative review, you cannot take court action on invalidity or transfer while the case is in progress at the NIPO.
Decisions made by KFIR can only be brought before the courts by an applicant or rights holder or objector against whom a decision has been made. The principle is that court action must not be taken within two months from the day when the decision was sent from KFIR. If a decision is appealed to the court, KFIR has to inform the NIPO accordingly as soon as possible, so that the NIPO database can be updated, and the decision must be announced in the Trademarks Gazette (Norsk varemerketidende).
Anyone who demonstrates that they have the right to a trademark in an application submitted by someone else may request that the NIPO transfers the application to them. See Section 21 of the Trademarks Act (see also Section 28 which applies during consideration of objections). This applies only to applications, and not to registrations. If the mark is registered, the time limit for objection of 3 months applies from the date of publication, see Sections 26 and 28.