Administrative review in a trademark case

If you wish to appeal a trademark registration after the objection deadline has expired, you have the option of submitting a written request for administrative review.

What is administrative review?

This is a complaint scheme for anyone who believes that:

  • a trademark registration is invalid (§ 35)
  • there are subsequent circumstances which mean that the trademark registration must be deleted (§ 36)
  • the trademark registration has not been put into actual use (§ 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 the Disputes Act § 1-3, 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 objection period has expired, i.e. three months from the date on which the registration was announced.

If one or more objections to the trademark registration have been submitted, administrative review can only be required when all objection 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 Patents Board Act.

What must a demand for administrative review contain?

A request for administrative review must contain:

  • the claimant's name and address
  • to which registration the requirement applies
  • on which grounds the claim is based
  • necessary documentation of conditions invoked in support of the claim

If there are licensees or mortgagees registered in the trade mark register, the claimant must notify them of this by registered letter.

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 "Claims and complaints to the NIPO and 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.

We give the owner a deadline to comment on the matter.

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 the NIPO has finished processing it.

What opportunities does the owner have to counter demands 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 set aside as invalid if use of the mark infringes the right to a locally incorporated trade mark.

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 Trade Marks 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 Trademark 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, possibly on the application date or the priority date of the owner's mark. Where the proprietor's mark is an international registration, it will be the international registration date, priority date or subsequent designation date that is decisive.

(illustration)

It is the claimant who has the burden of proof that the characteristic 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 the NIPO must prove that the sign has been put into real use.

If the claimant does not document that the sign has been put into real use or can show that there was a reasonable reason for non-use, the claimant's older sign 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 his trademark, the Patent 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 distinguishing mark is an interference with the claimant's right to a trademark or company name, for example if the distinguishing marks of the parties are interchangeable.

According to Section 35 b of the Trade Marks Act, the owner can respond to the claim by asserting that the claimant's characteristics:

  • did not meet the requirement for distinctiveness in the Trademarks Act section 14 first and second paragraphs and had not achieved distinctiveness through use according to the Trademarks Act section 14 third paragraph
  • had not achieved 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 owner'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 characteristic 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 exist next to each other, see Section 8 of the Trade Marks Act.

The proprietor can voluntarily ask the NIPO to completely or partially delete his registration, see section 46 of the Trademark Act.

If such deletion renders the review case "moot", that is to say that the grounds to which the claim applies cease to exist when the registration is fully or partially deleted, the review case will be closed.

If the proprietor's mark is an international registration, it must be canceled 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 § 8
  • assert that the mark is only locally incorporated, see section 40 second paragraph

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 owner responds to the claim by claiming that the claimant's registered characteristics have not been put into real use, or states one of the bases in section 35 b, then the claimant must counter these and document the bases.

Will the NIPO request documentation?

The NIPO will not request documentation to support 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, IPR adviser or another private actor who is an expert in the area. See the overview at www.iprhjelp.no.

If the claimant responds and submits documentation in the case, the NIPO will assess whether the holder should be given a deadline to comment on the claimant's documentation.

When will the NIPO make a decision?

When the parties have been given the opportunity to comment on the matter, and further correspondence is not necessary, the matter will be taken up for decision. The parties will then be given a deadline to submit claims for legal costs. The NIPO will consider all grounds in the decision.

Can you appeal the NIPO's decision?

The NIPO's decision can be appealed to the Norwegian Board of Appeal for Industrial Property Rights.