Administrative review of trademark registrations
What is an administrative review of a trademark registration?
Administrative review of a trademark registration is a complaint procedure for anyone who believes that:
- a trademark registration is invalid (Section 35)
- there are subsequent circumstances which mean that the trademark registration must be deleted (Section 36)
- the trademark registration has not been put into actual use (Section 37)
You can also submit a claim for administrative review against an international trademark registration that has been given effect in Norway.
The person who submits a claim for administrative review is called the claimant.
Who can submit a claim for administrative review?
The person submitting a claim for administrative review must have a legal interest in the matter. This follows from section 39 of the Trademarks Act. The concept of legal interest must be interpreted in accordance with the Dispute Act section 1-3, cf. Ot.prp. No. 98 (2008–2009) p. 69.
When can a claim for administrative review be made?
Claims for administrative review of a trademark registration can only be submitted when the deadline for submitting an opposition has expired. The opposition period has expired when three months have passed from the registration announcement date.
If an opposition to the trademark registration has been submitted, an administrative review can only be submitted when all opposition cases have been finally decided, see Section 40 of the Trademark Act.
How much does an administrative review of a trademark cost?
Whoever submits a claim for administrative review must pay an appeal fee, see section 19 of the Regulation on Fees. See the list of fees.
When the case is ready to be taken up for decision, the parties will be given a deadline to submit claims for legal costs. The person who loses the case may also be liable for the legal costs of the winning party, see Section 9 of the Industrial Property Office Act, and information on legal costs.
What must a claim for administrative review contain?
A claim for administrative review must contain:
- the claimant's name and address
- the registration which the claim applies to
- the grounds on which the claim is based
- necessary documentation of conditions invoked in support of the claim
If there are licensees or mortgagees registered in the trademark register, the claimant must notify them of this by registered letter.
The formal requirements follow from Section 40 of the Trademarks Act.
What is the procedure for processing claims for administrative review?
When the formal requirements have been met, we will forward the claim to the holder or the holder's representative. The holder is the owner of rights to the registration against which a claim for administrative review has been submitted.
We will give the holder a deadline to comment on the matter.
The Norwegian Industrial Property Office can also grant a deadline extension in the case, if the parties (claimant and holder) agree to this and submit a joint petition. This is relevant, for example, in cases where the parties have started negotiations for an amicable solution.
The parties can come to an agreement and end the case before the Norwegian Industrial Property Office has finished processing it.
What opportunities does the holder have to counter demands for administrative review?
The holder can oppose the claim by responding to the grounds on which the claim is based, see section 40 third paragraph of the Trademarks Act.
The holder also has the following options:
Make the passivity rules in Section 8 of the Trademarks Act applicable
This is relevant, for example, if the claimant has known and accepted that the registered mark has been used in Norway for five consecutive years after the date of registration, and the holder acted in good faith when the application was submitted.
Claim that the claimant's acquired distinctiveness is only local
Section 35 of the Trademarks Act, subsection two, stipulates that a registration shall not be set aside as invalid if use of the mark infringes the right to a trademark that has only acquired distinctiveness locally. Read more about locally acquired distinctiveness
Claim that the holder's trademark had acquired distinctiveness through use by the time the claim for invalidity was submitted
If the claimant claims that the holder’s trademark does not have distinctive character according to Section 14 of the Trademarks Act, the holder can respond by saying that the trademark has acquired distinctive character through use by the day the claim for invalidity was submitted.
If the claimant substantiates his claim that the holder's mark lacks distinctiveness, then it is up to the holder to prove that the mark has acquired distinctiveness through use, see section 35 second paragraph of the Trademarks Act.
Read more about acquired distinctiveness
Claim that the claimant's registered marks have not been put into actual use
If the claim is based on the fact that the trademark is registered in violation of the claimant's older trademark or older company name, the holder can demand that the claimant documents that the older right has been put into actual use, see section 35 a of the Trademark Act. In this regard, it is important to be aware that the claimant may then have to document use for two periods:
- the five-year period preceding the date on which the claim for invalidity was submitted
- the five-year period preceding the date of application or the priority date for the holder, alternatively the five-year period preceding the international registration date, priority date or subsequent designation date.
There can therefore be a question of two mandatory periods of use.
The claimant must only document actual use if at least five years have passed from the final decision to register the claimant's mark from when the claim was submitted, possibly on the application date or the priority date of the holder's mark. If the holder's mark is an international registration, it will be the international registration date, priority date or subsequent designation date that is decisive.
It is the claimant who has the burden of proof that the mark on which the claim is based has been put into actual use. This means that the person who has submitted a claim for administrative review to the Norwegian Industrial Property Office must prove that the mark has been put into actual use.
If the claimant does not document that the mark has been put into actual use or can show that there was a reasonable reason for non-use, then the claimant's older mark cannot cause the holder's registration to be revoked. In such a case, the claim will be rejected, and the registrations must exist side by side, see Section 8 of the Trademarks Act.
If, on the other hand, the claimant can document actual use of his trademark, the Norwegian Industrial Property Office will assess whether the holder's registration should be revoked. Such a cancellation will then be based on the fact that the registration of the holder's mark is an infringement of the claimant's right to a trademark or company name, for example if the trademarks of the parties are interchangeable.
Claim that the older trademark lacks distinctiveness or was not well-known at the time the holder's trademark was applied for registration, or from the holder's priority date
According to Section 35 b of the Trademarks Act, the holder can respond to the claim by asserting that the claimant's mark:
- did not meet the requirement for distinctiveness in the Trademarks Act section 14 first and second paragraphs and had not achieved distinctiveness through use according to the Trademarks Act section 14 third paragraph
- had not achieved distinctiveness, leading to a risk of confusion
- was not well known
The assessment of the conditions mentioned above will be based on the application date or the priority date for the holder's trademark. In such cases, the holder has the burden of proof. This means that it is the holder who must prove that the claimant's mark was not an obstacle to registration for the holder's trademark at the time of application or at the equivalent time for international registrations. If this leads to success, the claim will be rejected and the registrations will exist next to each other, see Section 8 of the Trademarks Act.
The holder can completely or partially delete his registration
The holder can voluntarily ask the Norwegian Industrial Property Office to delete their registration in whole or in part, see Section 46 of the Trademark Act. If such a deletion renders the review case "moot", that is to say that the grounds to which the claim applies cease to exist when the registration is fully or partially deleted, then the review case will be closed. If the holder's mark is an international registration, it must be cancelled through WIPO.
How should the holder answer or document their position?
The holder of the registration against which a claim is made can oppose the claim by:
- responding to the grounds that the claimant has asserted
- requiring documentation for actual use (Section 35 a), or claim that the older trademark lacked distinctiveness, had not achieved such a degree of distinctiveness that there was a risk of confusion, was not well known when the trademark was registered or had priority (Section 35b)
- asserting that there is passivity in accordance with Section 8
- asserting that the mark has only acquired distinctiveness locally, see section 40 second paragraph
It is important to be aware that if the holder only requires documentation for actual use, and this is documented, then the grounds that the claimant has otherwise asserted in the case will remain unchallenged. The holder should therefore respond to all claims made by claimants.
How should the claimant answer or document their position?
If the holder responds to the claim by claiming that the claimant's registered marks have not been put into actual use, or states one of the grounds in Section 35 b, then the claimant must counter these and document the grounds.
Will the Norwegian Industrial Property Office request documentation?
The Norwegian Industrial Property Office will not request documentation to support the grounds for the claims. Nor will we give advice on how much is needed to consider the grounds as documented. If you need more individual and tactical advice, we recommend using a patent attorney, IPR adviser or another private actor who is an expert in the area. See the list at www.iprhjelp.no (in Norwegian).
If the claimant responds and submits documentation in the case, the Norwegian Industrial Property Office will assess whether the holder should be given a deadline to comment on the claimant's documentation.
When will the Norwegian Industrial Property Office make a decision?
When the parties have been given the opportunity to comment on the case, and further correspondence is not necessary, the case will be decided. The parties will then be given a deadline to submit claims for legal costs. The Norwegian Industrial Property Office will consider all grounds in the decision.
Can the Norwegian Industrial Property Office's decision be appealed?
The Norwegian Industrial Property Office's decision can be appealed to the Norwegian Board of Appeal for Industrial Rights. Read more about the procedure for appealing.