Legal costs - trademarks
The scheme applies only to administrative review under the Trademarks Act and the Patents Act. For administrative review under the Designs Act and the Company Names Act, costs can only be awarded in the appeal case at the Norwegian Board of Appeal for Industry Property Rights (KFIR).
A party that has been wholly or essentially successful may be awarded necessary costs from the other party. This is a "may" rule, so that the party that has been wholly or essentially successful does not automatically have a right to have its costs met. Whether costs are to be awarded is decided after an assessment in which emphasis is placed, among other things, on whether there was good cause for having the case examined because it was doubtful, and whether it is reasonable based on the type of case and the circumstances of the other party to impose liability for costs.
Only necessary costs can be awarded, where appropriate, that is to say costs that appear reasonable to satisfy the interests of the party in the case. In establishing liability for costs, the Norwegian Industrial Property Office and the Norwegian Board of Appeal for Industry Property Rights must bear in mind that administrative review is to be a simple and reasonable alternative to court proceedings.
You must request covering of legal costs before the case is decided, because the Norwegian Industrial Property Office has to decide the matter of costs at the same time as processing the case. Towards the end of case processing, we will send a letter to each of the parties in which we set a time limit for submitting a request for award of legal costs.
NB: in administrative review cases in the area of designs and company names, costs can only be awarded in appeal cases by KFIR. The background for this is that no prior review takes place of all conditions for registration in these areas, and that important conditions for registration are therefore not assessed until administrative review is requested.
Contact between the parties
We consider it reasonable for the requesting party to make contact with the holder with an enquiry concerning deletion before the request is submitted to the NIPO. If the requesting party has not made such contract and cannot provide any good reason for not having done so, a request for legal costs to be covered might appear unreasonable. This could lead to costs not being awarded.
Costs of documentation concerning non-use
The NIPO has previously asked requesting parties to provide documentary evidence of non-use. Such documentary evidence will no longer be necessary. This change of practice means that costs associated with gathering such documentary evidence (user tests, etc.) will not be deemed to be a reasonable expense that can be claimed from the other party. The change will cover all such costs incurred after 1 November 2013.
Statement of costs
The statement must specify in detail what costs have been incurred, including the number of hours and hourly price used as a basis.
The basis for value-added tax must be stated where the party concerned is not registered as liable to value-added tax (consumers). The value-added tax represents an additional expense that the solicitor must include in the statement of costs for a request to be made for it to be met by the other party. Registered businesses that can claim deductions for input charges cannot request that this charge be covered as a legal cost. The charge will not represent an expense and is therefore not to be specified in the statement of costs. In such cases the costs are to be stated exclusive of VAT.
For private parties representing themselves, no value-added tax will be imposed, and VAT is therefore not to be listed.
Example of formulation of statement of costs:
|Specification||Time taken and price per hour||Cost|
|Advice and contact with client||1 hour, hourly rate NOK 1800||NOK 1800|
|Work associated with possible negotiations on consent/deletion|
|Drawing-up of requests and responses|
|Value-added tax (if necessary)|
Examples of specification of possible costs:
- Advice and contact with client
- Work associated with possible negotiations on consent/deletion
- Work on drawing-up of requests and responses
- Work on any later arguments
- Work on presentation of request for costs
- Outlay on fee payable to the Norwegian Industrial Property Office
- Estimated time spent on subsequent work, including receipt and reporting of the decision (assessment of whether an appeal is to be lodged at the Norwegian Board of Appeal for Industrial Priority Rights falls outside and is viewed as a charge in connection with the appeal case)
- Total accrued costs
It is important to point out that it is not only "necessary" costs that can be claimed from the other party. It will be emphasised in this assessment that the administrative review scheme is intended to be a simple and cheap alternative to court proceedings. This implies a greater need for efficiency and reasonableness. It is therefore estimated that the cost claims will be substantially lower. It is up to the person filing the request to assess whether the statement of costs needs explanation or greater detailing.
Recovery of legal costs
The Norwegian Industrial Property Office 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 Section 9 last paragraph of the Industrial Property Office Act.