Deletion of a trademark in the event of non-use - obligation to use

A trademark registration can be renewed for ten years at a time. In principle, the registration can last forever as long as it is renewed every ten years.

The registration holder can nevertheless lose this protection if the trademark is not put into real use, or where the use of the trademark ceases. This appears from section 37 of the Trade Marks Act.

The mark must be used 5 years after registration

The owner does not need to use the trademark once the trademark has been registered in the trademark register. The provision gives the holder a period of five years, after a final decision has been made, before the registration can be requested to be deleted. The period, which in English is often referred to as the "grace period", can best be described as a "peace period", but is also called the "duty to use period". Only after this period has expired can third parties demand that the registration be deleted.

No obligation to use the mark

There is no obligation to use the mark. The term "duty to use" is therefore misleading. The provision only means that registration protection can be lost in the event of non-use if someone demands that the registration be deleted. If no one attacks the registration, it remains. It is therefore important, both for the owner and third parties, to determine when this five-year period starts and ends. The owner will be able to determine when the trademark must be put into use at the latest in order not to risk losing registration protection. Third parties will be able to determine when a claim for administrative review can be submitted at the earliest, or a lawsuit for deletion can be brought. The provision also applies to international registrations, cf. Section 72 third paragraph of the Trade Marks Act.

A registration of a trademark must be deleted in whole or in part by judgment or by administrative review according to the Trademarks Act §§ 38 to 40 if the trademark owner has not, within five years from the day on which the final decision on registration of the trademark was taken, put the trademark into actual use in Norway for the goods or services for which it is registered, or if use has been interrupted for five consecutive years. The registration shall nevertheless not be deleted if there is a reasonable reason for the omission or interruption.

What is defined as use?

Use of the trademark in accordance with the first paragraph also includes use of the trademark in a form that only differs from the form in which it is registered in particulars that do not change the distinctive character, and placement of the trademark in Norway on goods or packaging for export. Use by someone else with the consent of the trademark holder is also considered use by the trademark owner.

A registration must not be deleted if use of the trademark is started or resumed after the end of the five-year period, but before a lawsuit has been brought or a demand for an administrative review has been made to have the registration deleted. However, account shall not be taken of use in the last three months before a lawsuit is brought or a demand for an administrative review is made, if preparations for use have only begun after the brand owner has become aware that a lawsuit may be brought or a demand for a review is made.

A final decision on the registration of the mark has been made when the objection deadline according to § 26 has expired, or, if an objection is submitted, when a final decision has been made in the objection case, or the objection has been withdrawn. For international trademark registration, a final decision on registration has been made when it has been finally decided that the registration shall have effect in this country in accordance with §§ 70 and 71. The Patent Office must enter the date when the five-year period begins to run in the trademark register.

In note to § 37 on page 68 of Ot.prp. no. 98 (2008-2009), it is stated:

"If an objection is received against the registration pursuant to Section 26, a final decision on registration is only available when the objection case has been finally decided, and the five-year deadline for putting the trademark into use in that case only runs from the day of such final decision. If there are no objections, the registration decision is final when the objection period of three months has expired."

Real considerations dictate that the period should not start until the holder has a reasonable assumption that registration protection has been achieved with final effect, see similar assessment in Oslo district court RG-2005-597, TOP SHOP. The owner will have such a reasonable assumption on the day that objections to the registration can no longer be submitted or on the day that the decision can no longer be appealed. This is consistent with the preparatory work which refers to the expiration of the objection period. This implies that the expiry of the appeal period is also used as a basis in those cases where this is relevant.

The Norwegian Patent Office assumes that the "non-use period", "duty to use period", "five-year period" or "grace period" starts at the following times

Registration and objection :

1. No objection is lodged against the registration: The five-year period starts the day after the expiry of the objection period, see section 37 fourth subsection of the Trade Marks Act.

2. An objection is filed against the registration: The five-year period starts the day after the expiry of the appeal period, cf. the appeal period to Klagenemda, see section 50 of the Trade Marks Act. If the decision is appealed, see point 4.

3. The objection is withdrawn: The five-year period starts at the time of decision for the Norwegian Patent Office's revocation decision or no later than two months plus one day after notification that the objection has been withdrawn was received by the Norwegian Patent Office, cf. section 25 of the trademark regulations.

4. Decisions that are appealed to the Board of Appeal:

• The decision cannot be brought before the courts, cf. Trade Marks Act section 52 third paragraph: The five-year period starts on the day on which the notice of the decision was sent to the relevant party.
• The decision can be brought before the courts, cf. Trade Marks Act section 52 second paragraph: The five-year period starts the day after the deadline for bringing the case before the court expired. It is assumed here that the decision is not brought before the courts, otherwise, see point 6.

5. The complaint is waived during processing in the Complaints Board: Same as under point 3, see section 52 of the trademark regulations.

6. The Board of Appeal's decision is brought to the courts , cf. the Trade Marks Act section 52 second paragraph and section 62 first paragraph letter a: In opposition cases the five-year period starts the day after a final judgment is issued.

NB: The appeal deadline may be postponed if it falls during the court holidays.

Deadlines that fall on public holidays and days equivalent to public holidays

When calculating the expiration of the objection or appeal deadline, it is important to remember that if the last day to submit an objection or appeal falls on 24 or 31 December, a Saturday, a public holiday or a day which according to the legislation is equivalent to a public holiday, then if the deadline is moved to the nearest working day, see section 6 of the payment regulations. The five-year period begins the day after the last day an objection or complaint can be submitted.

Example : A registration is announced on February 16, 2020. The objection period was 3 months from the date of announcement: May 16, 2020. This day was a Saturday so that the last day to submit an objection was shifted to the first working day, which in this case was Monday 18 May 2020. The five-year period begins the following day: Tuesday 19 May 2020.

Only statutory deadlines in the Trade Marks Act are postponed to the nearest business day, cf. § 6 of the payment regulations. The first day of the five-year period is not such a statutory deadline. This means that if the last day to submit an objection or complaint falls on a Friday, the first day of the five-year period will begin on Saturday.

Example : A registration is announced on 15 February 2020. The objection deadline was 3 months from the day of announcement: 15 May 2020. This day was a Friday. The five-year period begins the following day: Saturday 16 May 2020.

It is important to remember that the deadline for submitting an objection was 2 months in the 1961 Act and 3 months in the 2010 Act.

Example : A registration that was announced on 30 June 2010 will have an objection period of 2 months, while a registration that was announced on 1 July 2010 will have an objection period of 3 months. The appeal deadline was not changed in the 2010 Act.

Complaints about refusal cases (ex officio), cf. Section 24 of the Trade Marks Act:

In cases where the Board of Appeal or a higher authority annuls a decision to refuse a registration, the application is sent back to the First Department for registration. The period begins to run at the times indicated in points 1-6, cf. above. The Board of Appeal or a higher body does not make a registration decision, only a decision that the Patent Office's refusal to register was wrong. The formal registration and announcement of the mark is carried out by the Norwegian Patent Office.

Requirements for administrative review and independent lawsuits:

We cannot see that a demand for an administrative review or an independent invalidity action under Section 35 of the Trade Marks Act, cf. Section 40 and Section 62 first paragraph letter b, has any significance for the calculation of the period. The period must be based on the times specified in points 1-6, cf. above.

The period shall be calculated from the day on which the final decision "on registration of the mark" was made. This must be understood as dealing with the original decision to register the mark, not a later decision on the validity of the registration decision. If such a claim or lawsuit is raised during the first five-year period, a failure to use the mark due to this relationship will possibly be a factor in the assessment of whether there is a reasonable reason for the failure.