Regulations for documentation requirements in trademark cases

If you claim that you have a trademark right, you must also be able to document it.

What must be documented?

As a rule, all information that you believe is important to the case must be able to be documented before the Norwegian Industrial Property Office.

If, for example, your trademark application is rejected because the mark lacks distinctiveness, but you believe that the mark can be registered anyway because it has been established by use, you must be able to document that this is the case. 

Or if, in a case of risk of confusion, you state that you have a well-known brand, and that your brand therefore has even greater protection than ordinary trademarks, this must also be documented.

The regulations relating to documentation in trademark cases

Documentation for the use of a trademark can affect: 

  • whether you can obtain a trade mark registration (in case of lack of distinctiveness) 
  • whether you have a trademark right (protection and scope of protection – obstacles for registration or grounds for invalidity) 
  • whether you are the rightful owner of the trademark 
  • whether your trademark rights should continue or cease (duty of use, degeneration, etc.) 

Submission of documentation is, among other things, relevant in the following cases: 

Basically, all documentation showing actual use of a trademark will be relevant for the assessment. Examples:

  • Invoices, advertising budget, sales figures, market share and market research
  • Advertising material: Among other things: brochures, publications, leaflets, newspaper advertisements, radio and television advertisements and the like.
  • Use of the trademark on the Internet: Among other things: on the website, advertising on blogs or other communication websites.
  • Media coverage: Among other things: newspaper clippings, weekly magazine articles, radio commercials, television commercials.
  • Agreements between the parties
  • Annual statements and other official documents
  • Packaging, labels and the like.
  • Dealer statements and witness statements: We rarely receive these, and they are normally given little weight, cf. the EU Court's T-262/04 Bic, premise 78 et seq. and Lassen/Stenvik: Kjennetegnsrett p. 254 (256).

In the EU Court of Justice case C-25/05 P, August Storck KG v. OHIM, it was stated in premise 75:
"... in order to assess whether a mark has acquired distinctive character following the use which has been made of it, the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long- standing use of the mark; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations..." (our emphasis)

The statement above gives a general expression of what the documentation must show in relation to the question of whether a trade mark has achieved distinctiveness. The same factors must be taken into account when assessing whether there is an obstacle to registration or grounds for invalidity, and whether the protection has ceased.

The documentation must show:

  • Actual use of the trademark (brand use). The trademark that you wish to have registered must be used as a distinguishing feature and not as a descriptive term or exclusively as a company name. The trademark used must be approximately the same as the trademark that is to be registered. But documentation showing that the trademark has been used together with other elements may be relevant, cf. C-353/03, "Have a break...have a Kit Kat", premise 32 and C-24/05, Storck I, premise 59. The documentation must also show what kind of trademark is incorporated or is well known, so that it is possible to determine the extent of the protection. If the documentation is to show real use, it will be decisive whether the documentation shows use of the mark as it is registered or in a form that only differs from the form in which it is registered in the particulars that do not change its distinctive character. Here, advertising material, use on the internet and media coverage will be particularly suitable as documentation.
  • For which goods/services. The documentation must show which goods and/or services the trademark is used for. The documentation will be decisive for what kind of goods/services the trademark has achieved distinctiveness for, the scope of the protection and for which goods/services the trademark has been put into real use.
  • When the use has taken place.
  • The effect of the use before the application date, cf. the Trade Marks Act § 14 third paragraph.
  • The right to the incorporated or well-known brand must exist at the time of application, cf. Section 7 of the Trade Marks Act.
  • Actual use of the mark must be documented in the last five years before proceedings for deletion are instituted, cf. Section 37 of the Trade Marks Act.
  • The legal effects are linked here to specific times. The documentation must therefore be dated and show use in the relevant period. Use after the application has been submitted will not be weighted. Exceptions may, for example, be for market research and various declarations made shortly after the time of application, as these will be able to show knowledge of the brand before the application was submitted.

In the case of using the mark on the Internet, dated printouts must be submitted. The reason for this is that such websites can be constantly changing and a reference to a web address will therefore only show its use at the time of the visit. Furthermore, such web addresses can disappear or change, and thus lose their documentation value. A useful website for printouts of homepages is www.archive.org. By searching the "wayback machine" on this website, you will get the website as it was on different dates.

  • The geographical extent of the use. In relation to distinctive character, incorporation and well-known brands, the trademark must have been used in large parts of Norway, that is to say in the largest cities and in all parts of the country. A local incorporation can only justify a corresponding local exclusive right, and therefore does not provide a basis for registering the trademark with effect throughout Norway, cf. Another Department's decision no. 7475, Louis Vuitton. A local incorporated right can act as an obstacle to registration, but not as a ground for invalidity. Also in relation to actual use, the mark must have been used in Norway.
  • Scope of use. How much use is needed varies from case to case and from basis to basis. When we consider the distinctive character of the trademark, normal use over many years or intense use over a short period of time could be sufficient. The less distinctive a trademark is, the greater degree of incorporation must be documented. It takes a lot for a descriptive trademark to be sufficiently incorporated as a trademark, cf. Rt. 2005. p.1601, Yellow Pages, premise 48.

In order to maintain registration protection in the event of real use, only a certain marketing activity is required that shows a mercantile interest in the right. You must therefore document how long the use has lasted and how intense it has been. Sales figures, marketing costs/advertising budget and especially market share are the so-called "hard facts" which are well suited to show the extent of use. When using on internet pages, you must document the number of real visits (unique users) to the website in question. When referring to the number of followers and likes etc. on social media, then it must be confirmed that these users belong to the Norwegian sales circle. Most social media sites have features that allow professional users to extract demographic data.

  • Who is the rightful owner of the trademark. Here, previous working relationships and communication/agreements between the parties will be central documentation.

The Disputes Act applies to the conciliation councils and the courts, but since the Patent Office's decisions can be tried in a court, there is a close connection between the evidence requirements that apply to the administration and the rules of evidence in civil cases, cf. Graver, Alminnelig forvaltningsrett 3rd ed. p. 488. We refer to Section 17 of the Public Administration Act and to the general rules of evidence expressed in Section 21-6 second paragraph of the Disputes Act and Section 21-7 second paragraph.

It is the responsibility of the person who submits the documentation to explain what the documentation should show. The requirement for an explanation must ensure that the case is sufficiently disclosed.

In cases with several parties, a description of the documentation will enable the other party to become familiar with the material, and counter the claims that the documentation is to support (consideration of contradiction). A description of the documentation will also highlight what is particularly important to the Norwegian Patent Office. In the case of particularly extensive and fragmented documentation that is to be seen in context, it may be necessary for you to attach a description where you systematize the documentation. In the end, it is not the Patent Office's task to add together larger material to find the total use.

  • If the documentation consists of information about use, you must describe where in the documentation the use is expressed, in which time period the use was made and where the use geographically took place. The total use must also be added together (summed up). If you deliver a market survey, this must be described, see Interpretation statements regarding market surveys. Failure to provide an explanation may result in the Norwegian Patent Office not taking the documentation into account.

Example : If the documentation consists of 70 similar invoices, you must inform that a total of 70 similar invoices have been submitted, at least one of the invoices must be described, you must state the time period the invoices cover, that the invoices show use in Norway and that these in total, X shows the number of goods/services sold. If the use of a trademark appears in an article or an advertisement, you must show (mark) where in the article/advertisement the use is expressed. If you have referred to marketing or sales figures over several years, then you must state the total extent of use.

Requirements for several copies of the documentation

As mentioned above, the consideration of contradiction will be relevant in cases with several parties, including objection cases and claims for administrative review. All documentation that can easily be copied/scanned will be copied and scanned by the Patent Office, and forwarded to the other party. It is therefore not necessary to send over more than one copy of such documentation. Documentation that cannot be easily copied/scanned must be submitted in two copies. Examples of such documentation:

  • single documents larger than A4 (21 cm x 29.7 cm)
  • booklets, books, magazines
  • CDs, DVDs
  • physical product samples

§ 6. Language requirements

Documents other than the application can be in Norwegian, Danish, Swedish or English. If the documents are in another language, the Patent Office may require the applicant to deliver a translation into Norwegian within a deadline set by the Patent Office. The Norwegian Patent Office can also require the translation to be confirmed by a state-authorised translator. However, the Norwegian Patent Board may in individual cases accept other language than those mentioned in the first paragraph.

Section 53. Language requirements for subsequent documents

Documents relating to trademark registrations, including documents in cases of objection, transfer, administrative review or complaint etc., must be in Norwegian, Danish or Swedish. The same applies to documents that apply to international registrations from others than the International Bureau, including documents in proceedings for renewed assessment pursuant to section 48. If the document is in another language, the Norwegian Patent Office can demand that you provide a translation into Norwegian within a deadline set by the Norwegian Patent Office . See Sections 6 and 53 of the Trade Marks Regulations.

Right of access and requirement that documentation be exempted from the public

Anyone has the right to inspect the case's documents, cf. Trade Marks Act §§ 25, 31, 48, 51 last paragraph and 76. Certain information can be withheld from the public if you request it, cf. Trade Marks Act § 25 second paragraph.

For more information on what can be exempted from the public, contact the Norwegian Patent Board. We receive a large number of letters every day. It is therefore important that demands for exemption from the public are clearly stated in the letter's introduction. The topic is dealt with in Lassen/Stenvik: Kennetegnsrett p. 243 et seq.