Provisions on oral negotiations

Overview of the provisions that apply to oral negotiations.

1 Before negotiations

1-1. Who can demand negotiations?

Those who are parties to the case, see Section 7 second sentence of the Industrial Property Office Act. That is, applicants and holders of international registrations. Authorized representatives who have submitted a statutory power of attorney can demand oral negotiations on behalf of the client.

The Norwegian Industrial Property Office (NIPO) can also on its own initiative call the parties to a meeting or oral negotiations, if this is considered expedient, see section 7 first sentence of the Industrial Property Office Act.

1-2. What can be required to be negotiated?

A meeting or a negotiation must be held if NIPO deems it expedient, or if a party to the case requires such a meeting or negotiation, and has a factual reason for its demand, cf. Industrial Property Office Act section 7.

A meeting or an oral negotiation can take place at any stage of the proceedings, but the topic of the meeting/negotiation must be linked to a specific trademark application or registration and contribute to the information of the case. General questions about the proceedings or practice in NIPO are not subject to negotiation.

Questions that can be negotiated before registration / decided applicable:

  • Classification in a specific application
  • Madrid-UT question
    • Questions related to the international application and to the Norwegian basic application/registration
  • Questions related to the substantive proceedings in a trademark case.
  • Especially:
    • The assessment of absolute and relative registration obstacles
    • Possible restrictions/clarifications in the list of goods to avoid registration obstacles, such as lack of distinctiveness (§14) or confusion (§16 a)
    • Documentation for incorporation
    • Special cases relating to international registrations
  • Questions related to formalities:
    • Which images are required to register a three-dimensional trademark
    • Are deadlines met?
    • Are the conditions for reinstatement met?
    • Are the conditions for compensation met?
    • Brand changes - What is acceptable.
    • Formalities around international registrations.

The following questions fall outside the system (the list is not exhaustive):

  • Questions related to preliminary investigations.
  • Questions about registrations that are not live.
  • Questions about trademarks that have not been applied for registration.
  • Determination of objection cases.
  • Cases in The Norwegian Board of Appeal for Industrial Property Rights (KFIR) (must be brought before the Board of Appeal itself, and not NIPO).

1-3 How should oral negotiations be agreed?

The applicant or holder of an international registration may request oral proceedings in a trademark case. The claim is submitted and entered as a document in the case. The claim must be submitted in writing.

Such a claim is time-barred if all statements from NIPO have been answered in the claim or are subject to negotiation. Otherwise, the usual rules for processing deadlines apply.

NIPO has a deadline of three weeks to accept the demand for oral proceedings, and to set a time.

The negotiation consultant decides for NIPO whether negotiations should be held.

  • Refusal of the demand for oral negotiations must be in writing.
  • Refusal of the demand for oral proceedings must be justified and based on the terms of Section 7 of the Patents Board Act.
  • Refusal of such a claim is not the subject of an appeal to KFIR, see Section 49 of the Trade Marks Act.
  • There is a new deadline for responding to NIPO's previous letter when a refusal of oral proceedings is sent out.

Reasons for refusal:

The negotiation does not apply to questions/matters that fall under the system, see Section 7 of the Industrial Property Office Act and points 1-2 above.

The question has previously been subject to negotiation (the team considered sufficiently informed).

Questions that have previously been decided by a court or by KFIR in the same case cannot be negotiated.

1-4 Preparations

The parties to the case must be prepared for oral negotiations. This means, among other things, that:

  • The subject of negotiations must be known to all parties.
  • The background for requiring oral negotiation must be known.
  • Necessary documents must be sent to the parties before negotiations take place.
  • The information has been read by the parties.

1-5 Place of negotiation

The negotiation takes place at the NIPO's premises, unless otherwise agreed

1-6 Adjournment

Agreed oral negotiations can be required to be postponed by both parties if there is a factual reason for this. (Same reasons as normal postponement.)

2 During the negotiation

2-1 Who can attend oral proceedings?

Two negotiation consultants normally meet from NIPO. If it is necessary to get the case sufficiently informed, the responsible case manager can attend. If it is a question of negotiation about classification, the executive case manager in the case or a negotiation consultant with expertise in classification can meet.

If the nature of the case dictates it, or if the outcome of the case has fundamental consequences, a section manager/senior advisor/advisor in the Design and Trademark Department can attend.

A maximum of 3 people attend from the applicant's/proprietor's side. If necessary, the applicant/proprietor can submit more, but this must be approved by NIPO.

2-2 Language

Oral negotiations are conducted in Norwegian.

The report is written in Norwegian.

Otherwise, Section 6 of the Trademark Regulations applies as far as it is appropriate.

2-3 Meeting management

The negotiation consultant leads the negotiation.

This implies:

  • That he/she is moderator
  • That he/she can interrupt the negotiation (see conditions below)
  • That he/she can make decisions in the case that bind the Patent Office.

2-4 The proceedings in the negotiation

The negotiation starts with the names of those present being noted, and the negotiation consultant will give a brief summary of the case and the topic/problem(s) for the negotiation.

If it is the applicant/proprietor who has requested the oral negotiation, it is he/she who basically controls the progress of the negotiation and disposes of the time set aside for the negotiation. The applicant/proprietor must then themselves prioritize the time set aside, so that the person in question can present their side of the case in a satisfactory manner.

The matter must be sufficiently informed for a decision to be made.

2-5 End of oral proceedings

Negotiations end when:

  • The parties agree on that.
  • The negotiation has exceeded the maximum/agreed time Normally, an oral negotiation should not exceed one hour.
  • The negotiation consultant considers it obvious that the negotiation will not proceed.
  • The negotiation consultant considers that the matter is sufficiently informed, so that a decision can be made.
  • The parties have reached a result that they can agree on.
  • During the negotiations, new information or statements have come to light which mean that the negotiations must be postponed or interrupted.
    • This is particularly relevant if the new information means that the case is not considered to be sufficiently informed.

2-6 Minutes

The negotiation consultant writes a report from the negotiation. The minutes must contain:

  • A summary of the main points from the negotiations.
  • NIPO's reasoning.
  • Conclusion, that is:
    • What was decided
    • What should happen next in the case - whether one of the parties has an obligation to do something, and possibly within what deadline should apply.

If a decision is reached at the meeting, minutes can be written there and then. Otherwise, a report will be sent later, and a deadline will be given to carry out what was decided.

3 After the negotiation

3-1 Minutes

After oral negotiations have been completed, a report must be sent to the parties.

The report is sent out no later than two weeks after the negotiation has been completed.

By agreement with the applicant/proprietor, the minutes will also contain either a standard substantive document in which NIPO takes a position on the issue(s) in the oral proceedings, or a formal decision.

In the case of a substantive letter, what was agreed is carried out, and the case is then returned to the normal procedure rules. For example:

  • The mark is registered - the usual objection rules apply.
  • The mark is refused - the applicant requests a renewed assessment or a formal decision.

Where a decision is made after the negotiation, the applicant/proprietor will receive the minutes and the decision with the usual appeal period to KFIR.

3-2 Deadlines

The applicant/holder has a deadline of two weeks to accept the decision that appears in the minutes and the written statement. In the case of a decision, as mentioned, the usual appeal period to KFIR applies.

 

Graphic representation

Graphical presentation of oral proceedings
Graphical presentation of oral proceedings