Administrative review in a trademark case
If you want to appeal a trademark registration after the opposition deadline has expired, you can submit a written request for administrative review.
Published: 10. june 2024
Last modified: 24. june 2024
What is administrative review?
- a trademark registration is invalid (section 35)
- there are subsequent circumstances which mean that the trademark registration must be deleted (section 36)
- the trademark registration has not been put into actual use (section 37)
You can also submit a claim for administrative review against an international trademark registration that has been given effect in Norway.
The person who submits a claim for administrative review is called the claimant.
Who can submit claims for administrative review?
The person submitting a claim for administrative review must have a legal interest in the matter. This follows from Section 39 of the Trademarks Act.
The legal concept of legal interest must be interpreted in accordance with Section 1-3 of the Disputes Act, cf. Ot.prp. No. 98 (2008–2009) p. 69.
When can you make a claim for administrative review?
A claim for administrative review can be made at the earliest after the opposition period has expired, i.e. three months from the date on which the registration was published.
If one or more oppositions to the trademark registration have been submitted, an administrative review can only be requested when all opposition cases have been finally decided. See Section 40 of the Trademarks Act.
How much does it cost?
Anyone who submits a claim for administrative review must pay an appeal fee. This is in accordance with Section 19 of the payment regulations.
When the case is ready to be taken up for decision, the parties can submit claims for legal costs. This must be done within a given deadline.
The person who loses the case may be liable for the legal costs of the winning party. See information on legal costs in Section 9 of the Industrial Property Office Act .
What must a claim for administrative review contain?
A claim for administrative review must contain:
- the claimant's name and address
- to which registration the claim applies
- on which grounds the claim is based
- necessary documentation of conditions invoked in support of such claim
If there are licensees or mortgagees registered in the trademark register, the claimant must notify them of this by registered mail.
The formal requirements follow from Section 40 of the Trademarks Act.
How to submit claims for administrative review?
To submit claims for administrative review, you can use the form "Krav og klager til Patentstyret og KFIR " in Altinn.
How do we process requests for administrative review?
When the formal requirements have been met, we forward the claim to the owner or the owner's representative. The owner is the holder of the rights to the registration against which a demand for administrative review has been submitted.
The owner must comment on the matter within a given deadline.
We can extend this deadline if the parties (claimant and holder) agree to it and submit a joint petition. This may, for example, be relevant if the parties have started negotiations for an amicable solution.
The parties can come to an agreement and close the case before NIPO has finished processing it.
What opportunities does the owner have in relation to a claim for administrative review?
The owner can oppose the claim by answering the reasons on which the claim is based. The owner also has other options, see the points below.
This is relevant, for example, if the claimant has known and accepted that the registered mark has been used in Norway for five consecutive years after the date of registration, and the holder acted in good faith when the application was submitted.
Section 35 of the Trademarks Act, subsection two, stipulates that a registration shall not be declared invalid if use of the mark infringes the right to a trademark established by use locally.
If the claimant claims that the proprietor's trademark does not have distinctive character according to Section 14 of the Trademarks Act, the proprietor can respond by saying that the trademark has acquired distinctive character through use by the day the claim for invalidity was submitted.
If the claimant substantiates his claim that the proprietor's mark lacks distinctiveness, it is up to the proprietor to prove that the mark has acquired distinctiveness through use. See Section 35 second paragraph of the Trademarks Act.
If the claim is based on the fact that the trademark is registered in violation of the claimant's older trademark or older company name, the holder can demand that the claimant documents that the older right has been put into real use, see the Trademarks Act Section 35 a.
In this connection, it is important to be aware that claimants may then have to document use for two periods:
- the five-year period preceding the date on which the claim for invalidity was submitted
- the five-year period preceding the date of application or the priority date for the holder, alternatively the five-year period preceding the international registration date/priority date/subsequent designation date.
There can thus be a question of two mandatory periods of use.
The claimant must only document actual use if at least five years have passed from the final decision to register the claimant's mark from when the claim was submitted, alternatively on the application date or the priority date of the owner's mark. If the owner's mark is an international registration, it will be the international registration date, priority date or subsequent designation date that is decisive.
It is the claimant who has the burden of proof that the trademark on which the claim is based has been put into real use. This means that the person who has submitted a claim for administrative review to NIPO must prove that the trademark has been put into real use.
If the claimant does not document that the trademark has been put into real use or can show that there was a reasonable reason for non-use, the claimant's older trademark will not be able to cause the holder's registration to be revoked. In such a case, the claim will be rejected and the registrations must remain side by side. See Section 8 of the Trademarks Act.
If, on the other hand, the claimant documents real use of the trademark, the Norwegian Industrial Property Office will assess whether the holder's registration should be revoked. Such a cancellation will then be justified by the fact that the registration of the owner's trademark is an infringement of the claimant's right to a trademark or company name, for example if the trademarks of the parties are confusingly similar.
According to Section 35 b of the Trademarks Act, the owner can respond to the claim by asserting that the claimant's trademark:
- did not meet the requirement for distinctiveness in Section 14, subsection one and two of the Trademarks Act and had not acquired distinctiveness through use according to Section 14, subsection three of the Trademarks Act
- had not acquired distinctiveness so that there was a risk of confusion
- was not well known
The starting point for the assessment of the conditions mentioned above will be the time of application or the priority date for the holder's trademark. In such cases, the holder has the burden of proof.
This means that it is the holder who must prove that the claimant's trademark was not an obstacle to registration for the holder's trademark at the time of application or corresponding times for international registrations.
If this is successful, the claim will be rejected and the registrations will coexist, see Section 8 of the Trademarks Act.
The holder can voluntarily ask NIPO to completely or partially revoke the registration, see Section 46 of the Trademarks Act.
If such revokation leads to that the grounds to which the claim applies cease to exist the administrative review case will be closed.
If the proprietor's mark is an international registration, it must be cancelled through WIPO.
What must the holder answer/document?
The holder of the registration against which a claim is made can oppose the claim by:
- respond to the grounds that the claimant has asserted
- require documentation for actual use (Section 35 a) or claim that the older trademark lacked distinctiveness/had not achieved such distinctiveness that there was a risk of confusion/was not well known when the trademark was registered/had priority (Section 35b)
- assert that there is passivity in accordance with Section 8
- assert that the mark is only established locally by use, see Section 40, subsection two
It is important to be aware that if the holder only requires documentation for real use, and this is documented, then the grounds that the claimant has otherwise asserted in the case will remain unchallenged. The owner should therefore respond to all claims made by claimants.
What must the claimant answer/document?
If the holder responds to the claim by claiming that the claimant's registered trademark has not been put into real use, or states one of the grounds in Section 35 b, the claimant must reply to this and document the replies.
Will NIPO request documentation?
NIPO will not request documentation that supports the grounds. Nor will we give advice on how much is needed to consider the grounds as documented. If you need more individual and tactical advice, we recommend using a patent office, an IPR advisor or another private actor who is an expert in this area.
If the claimant responds to and submits documentation in the case, NIPO will assess whether the holder should be given a deadline to comment on the claimant's documentation.
When will NIPO make a decision?
When the parties have been given the opportunity to comment on the matter, and further correspondence is not deemed necessary, the matter will be taken up for decision. The parties will then be given a deadline to submit claims for legal costs. NIPO will consider all grounds in the decision.
Can you appeal NIPO's decision?
NIPO's decision can be appealed to the Norwegian Board of Appeal for Industrial Property Rights.