Oppositions - trademarks

Information about the proceedings, formal requirements, the roles, responsibilities and duties of the parties involved, and the duties of the Norwegian Industrial Property Office (NIPO).

What is an opposition?

Anyone who is of the opinion that a trademark has been incorrectly registered, can submit an opposition to the registration to the NIPO. You can also submit an opposition concerning an international trademark registration that has been given protection in Norway. The person who submits an opposition is called the opponent.

An opponent can justify the opposition by stating that:

  • the trademark has been registered in violation of the Trademarks Act Sections 14–16
  • the trademark must be transferred to him or her, see Section 28 of the Trademarks Act

It is not necessary to have a legal interest in the case in order to submit an opposition. This means that anyone can submit an opposition to the NIPO.

When should the opposition be submitted?

An opposition must be submitted to the NIPO within three months from the date when the registration was published.

If more than three months has passed since this date, you can submit a request for an administrative review of the trademark registration.
Read more about the procedure for complaints. (link coming)

How much does an opposition cost?

There is no charge for submitting an opposition, but you cannot request to have your legal costs covered by the other party.

What must the opposition contain?

An opposition must contain:

  • the opponent’s name and address
  • which registration the opposition applies to
  • the grounds on which the opposition is based
  • documentation necessary to support the grounds for the opposition

The formal requirements listed above follow from Section 26 of the Trademarks Act.

How does the NIPO process an opposition case?

When the formal requirements for an opposition have been met, we will forward the opposition to the holder or the holder's representative. The holder is the owner of the rights to the registration against which an opposition has been lodged.

We give the holder a deadline to comment on the opposition.

The NIPO can also grant a deadline extension in the case, if both parties (opponent and holder) agree to this and submit a joint petition to this effect, see Section 27 a) of the Trademarks Act. This is relevant, for example, in cases where the parties have initiated negotiations for an amicable solution.

The parties can come to an agreement and close the case before the NIPO has finished processing the opposition case.

Which alternatives does the holder have to respond to an opposition?

The holder can counter an opposition by responding to the grounds on which the opposition is based, see section 27 second paragraph of the Trademarks Act. In addition to this, the holder has the following options:

Claim that the holder’s trademark had acquired distinctive character through use before the opposition was lodged

If the opponent claims that the holder's trademark does not have a distinctive character according to Section 14 of the Trademarks Act, the holder can reply that the trademark has acquired distinctive character through use before the day the opposition was submitted.

If the opponent 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 29 of the Trademarks Act, first paragraph, last sentence.
Read more about acquiring distinctiveness through use

The holder is of the opinion that the older mark has not been put into actual use

If the opposition is based on the fact that the trademark is registered in conflict with the opponent's older trademark or older company name, the holder can demand that the opponent documents that the older right is in actual use, see section 29 a) of the Trademark Act. This option only applies if, on the application date for the holder's mark (or the priority date), more than five years has passed since the final decision was taken to register the opponent's mark. If the holder's mark is an international registration, it will be the international registration date, the priority date or the subsequent designation date that is the decisive factor.

The opponent has the burden of proof and must show that the trademark on which the opposition is based has been in actual use. This means that the person who has submitted an opposition to the NIPO must prove that the opponent or someone with the opponent's consent has actually used the mark. 

If the opponent does not document that the mark has been put into actual use, or show that there were reasonable grounds for non-use, then the opponent's older mark cannot be the reason to revoke the holder's registration. If this is the case, the opposition will be rejected, and the registrations will remain side by side, see Section 8 of the Trademarks Act.

If, on the other hand, the opponent can document actual use of the trademark, the NIPO will consider whether the holder's registration should be cancelled. The grounds for a cancellation will then be the fact that the registration of the holder’s mark is an infringement of the opponent's right to a trademark or company name, for example if there is a likelihood of confusion between the marks.

The holder is of the opinion that the opponent's older trademark lacks distinctiveness or was not well known when the holder applied for trademark registration, or from the holder's priority date

According to section 35 b of the Trademarks Act, the holder can respond to the opposition by claiming that the opponent's trademark:

  • 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 such distinctiveness that there was a risk of confusion
  • was not well known

The starting point for assessing the requirements mentioned above will be the date of the application or the priority date for the holder's trademark. Therefore the holder has the burden of proof. This means that it is the holder who must prove that the opponent's trademark was not an obstacle to registration for the holder's trademark on the application date or from the priority date. If this is successful, the opposition will be rejected and the registrations will remain side by side, see section 8 of the Trademarks Act.

The holder can completely or partially delete their registration

The holder can voluntarily ask the NIPO to delete their registration in whole or in part, see Section 46 of the Trademark Act. If the deletion means that there are no longer grounds to oppose the registration in whole or in part, then the opponent’s case will be closed. If the holder's mark is an international registration, it must be cancelled through WIPO.

How should the holder respond in an opposition case? (a brief summary)

The person who is the holder of the registration against which an opposition is made can counter the opposition. They can:

  • respond to the grounds put forward by the opponent
  • require documentation for actual use (Section 29 a), or claim that the older trademark lacked distinctiveness or was not well known when the trademark was registered or had priority (Section 35 b).

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 opponent has otherwise asserted in the case will remain unchallenged. The holder should therefore respond to all the claims made by the opponent.

How should the opponent respond og present documentation in an opposition case?

If the holder responds to the opposition by claiming that the opponent's registered trademark has not been in actual use, or states the grounds in § 35 b, then the opponent must counter these claims and document the grounds.

Will the NIPO request documentation in opposition cases?

The NIPO will not request documentation to support the reasons for the opposition. Nor will we give advice on how much is needed to consider the reasons as documented. If you need more individual and tactical advice, we recommend that you contact a patent agent, IPR adviser or other private actor who is an expert in the area. See the overview at iprhjelp.no (in Norwegian)

If the opponent responds and submits documentation in the case, the NIPO will assess whether the holder should be given a deadline to comment on the opponent's documentation.

When will the NIPO take a decision?

When the parties have had the opportunity to comment on the case, and further correspondence is not necessary, the NIPO will take a decision, considering all grounds in the case.

Can the NIPO's decision be appealed?

You can appeal the NIPO's decision to the Norwegian Board of Appeal for Industrial Property Rights.

For more information:

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