Trademark appeal options

There are different appeal options during various phases of the trademark process.

  • During the application process

    Protest

    A protest is a complaint received by the Norwegian Industrial Property Office from a third party during the application processing - i.e. before an exclusive right to use the trademark has been granted.

  • During the application process

    Administrative transfer

    A trademark application or registration can be transferred from the original applicant to another party if it can prove entitlement to the application. This is called an administrative transfer of the application/registration.

    The right to claim entitlement to a trademark application or registration is governed by Section 21 and section 28 in the Norwegian Trademarks Act.

  • 0-3 months after publication of a registration

    Opposition

    In an opposition you can request that the trademark is cancelled or that the right to the trademark is transferred to you (administrative transfer).

    An opposition can only be filed after the trademark has been registered, but no later than 3 months after the publication of this registration.

  • From 3 months after registration

    Administrative review

    If the opposition period has expired, you can still appeal by submitting a written request for administrative review of the trademark registration.

Issues that can be addressed

During the processing of an application for a trademark or after registration of a trademark, you may claim that a trademark:

  • is confusingly similar to earlier rights
  • lacks distinctive character
  • is applied for in bad faith
  • is contrary to law, public order, or morality
  • is liable to deceive
  • contains escutcheons or other signs/flags without without authorisation from the appropriate authority
  • contains a geographical origin for wine or spirits
  • has the wrong proprietor

In addition, during administrative review, you may claim that a trademark:

  • is invalid
  • has become generic
  • has not been used in accordance with the obligation to use
See the Trademarks Act

Protest

A protest is an objection that can be filed against the application of a trademark If someone thinks that a trademark in a trademark application is too similar to a registered or incorporated trademark or company name, or that the trademark is a descriptive word that should be kept free for everyone, and that the trademark should not be registered for such reasons. NIPO will consider whether such protest should be given any weight during the processing of the trademark application.

You can file a protest to an application until the processing of the trademark application has been completed. If the protest is submitted after a trademark has been registered, the protest will be treated as an opposition.

The protest must be submitted in writing and state the reasons for the protest. NIPO will consider the protest and decide whether it will affect the processing of the application or not.

We will forward the protest to the applicant, and a receipt confirmation will be sent to the protesting party.

  • If the mark is refused registration, the party who protested against the trademark application will not be notified.
  • If the mark is registered, NIPO will notify the party who protested, with information about the possibility to submit an opposition.

  • The trademark application is refused or refused partially (maintained with a limited list of goods and services).
  • The protest is considered, but not taken into account.

A protest is free of charge.

Opposition against a newly registered trademark

Anyone who believes that a trademark has been registered on an incorrect basis can submit a written opposition to NIPO. The most common scenario is that you believe that someone has registered a trademark that is similar to your own trademark or company name. You can also file an opposition if you believe NIPO has registered a word that must be kept free for everyone to use. The opposition may result in a partial or full cancellation of the registration.

You must submit the opposition in writing to NIPO within three months from the publication of the registration. We recommend that you use the form Correspondence to NIPO in Altinn.

The opposition must have been received by NIPO no later than three months after the publication date of the trademark registration.

The opposition must be submitted in writing to NIPO. The opposition must include:

  1. Name and address of the opposing party, and if there is a representative, the name and address of its representative.
  2. The registration number of the trademark the opposition concerns.
  3. The opposition grounds.
  4. Information about which goods and services the opposition concern. Alternatively, which goods and services that are not subject to the opposition if it is a request for a partial cancellation of the registration.
  5. Required documentation in support of the opposition. 
  6. Power of attorney if using a representative and the representative is not a lawyer or associate lawyer.

The opposition must be submitted in Norwegian, Danish or Swedish. Oppositions submitted in English are not accepted.

 

If the opposition does not fulfil the formal requirements above, NIPO will send a letter with a time limit of one (1) month to correct the deficiencies. We will reject your opposition if you do not correct the deficiencies within the deadline.

Once the formal requirements of the opposition are met, we will forward it to the holder of the trademark registration. The person in question is given a time limit of one-month to comment.

When the holder of the registration has responded, we will consider whether further statements from the parties are required. Both parties can request an extension of the deadline if more time is needed to respond to the opposite party's arguments.

When NIPO decides that the case has been sufficiently informed, usually when both parties have submitted statements twice, the executive officer will write a decision.

The opposition process is handled by a different executive officer than the registration process in order to provide a new an independent assessment of the case.

 

  • The trademark is cancelled in full or part with a limited list of goods and/or services.
  • The opposition is rejected, and the trademark registration remains unchanged.
  • The trademark is transferred to the correct owner.

Submitting an opposition is free of charge.

If the opposition or parts of it is not agreed with, the opposer may appeal the decision to the Norwegian Board of Appeal for Industrial Property Rights (KFIR). If the opposition is fully or partly accepted, the trademark holder may appeal the decision to KFIR. The due date for an appeal is two (2) months from the day the decision is sent to the parties. To have your appeal processed, you must pay an appeal fee.

Administrative review

You may request an administrative review if you believe that a registered trademark should be deleted in full or part if, for example, the trademark should not have been registered, has become generic or has not been taken into use.

This option applies after the opposition period has expired, and is a quick, easy and inexpensive alternative to court actions. In order to request an administrative review, you must submit a written explanation with your arguments to NIPO. We recommend that you use the form Correspondence to NIPO in Altinn. 

There is no time limit for submitting a request for administrative review, but the time limit for filing an opposition must have expired. Any oppositions or cases in the courts concerning the trademark must be finally decided before an administrative review can be submitted.

A party that has previously initiated a court action concerning the validity or revocation of the trademark can under normal circumstances not request a review of the trademark later.

A request for administrative review can be made by anyone with a legal interest.

The same rules as for oppositions apply.

 

If your request does not fulfil the formal requirements, NIPO will set a time limit for you to correct the deficiencies. If you do not correct the deficiencies within this time limit, the request will be rejected.

When the formal conditions for the request are met, we will send the claim to the holder of the trademark registration with a time limit of one month to submit a statement.

A decision will normally be made after the receipt of a statement from the trademark holder.

The following time limits apply:

  • The trademark holder is given a one-month time limit to submit a statement.
  • If we believe that further statements are necessary, the parties will have a response period of 14 days. If the holder claims that the appellant must document genuine use, opposite party will be given a response time limit of one month.
  • As a rule, we do not grant an extension of the time limits unless there is a reasonable ground or consent from the other party. If there are reasonable grounds, we will grant a 14 days’ time limit extension. The consent must state the length of the extension.
  • If there are deficiencies in the claim, the claimant is given a time limit of 14 days to correct the deficiency.
  • In connection with the summer holiday period or public holidays, we grant longer time limits (four to six weeks).
  • If there are no reasonable grounds to extend the time limit or consent has not been obtained, a decision will be made in the case based on the existing information.
  • A decision is usually made within two to three months.

 

The fee for administrative review is NOK 4 000.

 

Administrative transfer

A trademark application can be transferred from the original applicant to anoyone who can prove entitlement to the application.

This is called administrative transfer of the application/right. Sections 21 and 28 of the Trade Marks Act govern whether you can claim the right to a trade mark that has applied for registration or that has already been registered and transferred to you.

Submit the request via Altinn

You may use the Correspondence to NIPO form.

Appeal against NIPO's decisions

Is your application still being processed by NIPO and you disagree with our assessment?
Read more about your options

If NIPO has made a final decision you disagree with, you can appeal to the Norwegian Board of Appeal for Industrial Property Rights (KFIR). You send the appeal to NIPO, which will forward it to KFIR.

You can appeal in these situations:

  • You disagree with NIPO's refusal of a trademark application.
  • Your opposition to a registration is not succesful.
  • Your request for an administrative review to delete or cancel a registration is not successful.
  • You disagree with NIPO's decision to cancel a registration due to obvious error or conflict of priority.
  • You disagree that NIPO has rejected or refused a case for resumption, exemption from public disclosure, access to documents, renewal of a trademark registration, change of a trademark or that a case still should be processed despite failure to meet the deadline.

NB: Please note language requirements: you must submit the claim in Norwegian, Danish or Swedish. We reject the processing of complaints submitted in other languages, e.g. English.

The time limit to appeal is two months from the day NIPO sent the decision to you.

The appeal must be filed to NIPO. If the appeal is likely to succeed, NIPO has the opportunity to reverse or change its previous decision. Otherwise, we will forward the appeal to the Norwegian Board of Appeal for Industrial Property Rights (KFIR).

 

You can appeal decisions from KFIR to the District Court of Oslo. The general rule is that a legal action must be filed within two months from the day the decision was sent from KFIR.

KFIR's decisions can only be brought before the courts by an applicant, a rights holder or an opposer that has been ruled against.

An ongoing administrative review must be finalised before you can bring an action for invalidity or transfer.

More information on KFIR's website