Brand and reputation management in Norway: proactive and reactive measures under Norwegian Law with a focus on trademarks

Brand and reputation management is of utmost importance for any company. From a legal perspective, management of rights associated with brand and reputation entails both proactive and reactive measures. Proactive measures include all sorts of protection of intellectual assets, covering protection of IP rights such as trademarks, design and patents, and protection of IP assets without registration, such as copyright (non-registrable in Norway in opposition to the US), trade secrets and goodwill etc. Reactive measures are all about the legal ‘toolbox’ you have available if your right or brand, registered or not, is being (or threatened to be) infringed or misused. In this article we will give some insight into these aspects under Norwegian law.

In the following article, we will particularly focus on Norwegian trademark legislation. The Norwegian Trademark Act sets the framework for effective and enforceable brand and reputation management. Norway is not an EU member state, but has entered a comprehensive agreement with the EU through the Agreement on the European Economic Area (EEA Agreement). The overall goal of the EEA Agreement is to link the EEA countries to the EU’s internal market. The EEA Agreement guarantees the EU Single Market’s ‘four freedoms’ for all EEA and EU states, as well as non-discrimination and equal rules of competition throughout the EEA area. This gives Norway and the EU the same rights and obligations with regards to the trade of goods, investments, banking and insurance, the purchase and sale of services and the right to work, study and live in other countries in the area etc. Due to the EEA Agreement, Norwegian trademark legislation and practice is aligned with European law and practice, which involves similar regulations as to exclusivity, which signs can be registered as trademarks, content of the registration, restrictions and limitations, exhaustion, priority and so on.

When you, as an enterprise, want to start selling goods or services in the European market, you should always make sure that you have the freedom to operate with your brand in all your geographical markets. The best way to secure freedom to operate for your brand is to register your brand as a trademark in all relevant jurisdictions.

Within the EU, an effective way to proceed is to register your trademark with the European Intellectual Property Office (EUIPO), as the European Union trademark authority, to get a valid registration in all 27 member states in one registration.

However, it is important to bear one significant element in mind when starting to distribute goods or services in Norway. As Norway is not a member state of the EU, a European Trademark Registration does not cover Norway. As mentioned above, the EEA Agreement secures free movement of goods and services within the European marketplace, including Norway. But, without a valid trademark registration in Norway, enterprises risk infringing trademarks rights in Norway as soon as their goods and services cross the Norwegian border. Thus, it is important to keep in mind that you should, when entering the European market with your goods and services, in addition to registering your brand with EUIPO, also always consider to register your brand with the Norwegian Intellectual Property Office (NIPO).

As an example – let us say you enter the European market with your service or goods in eg Germany, and register your trademark in EUIPO, to be able to move on outside Germany with your service or goods at a later stage. A year later, you start selling your products in other EU countries, including Scandinavia. In accordance with the EEA Agreement, you can distribute and sell your goods and services in all Scandinavian countries: Sweden and Denmark as part of the EU, and Norway as part of the EEA agreement. However, the significant difference is that the EU registration of your trademark protects your goods and services in Sweden and Denmark, but not in Norway, since the EUIPO registration solely covers the EU’s internal marked. By only having your brand registered as a trademark in the EU, you do not have protection for your brand in Norway, nor necessarily the freedom to operate with your brand in Norway.

As a result, it is of great importance for foreign enterprises who want to enter all of the EU’s internal market with products or services to make sure to have relevant trademark registrations in the Norwegian trademark register through an application to NIPO (or the World Intellectual Property Organization (WIPO)). This is the most secure way to obtain control of your brand management in Norway as part of EU’s internal market, and the preferred way to make sure that your goods or services are not banned by existing prior rights, such as prior registered brands’ similar or identical trademarks.

Further we will give a brief overview of reactive measures available under Norwegian law if you experience a potential infringement or misuse of your brand.

Any infringement or misuse may obviously be brought in for the ordinary courts of justice. The ordinary courts in Norway have generally a high level of quality and trust associated with their judgments. However, as in most jurisdictions, court proceedings are potentially expensive and time consuming.

A far more efficient way of contesting a potential trademark infringement is to enter administrative proceedings with NIPO, such as filing oppositions within three months from the grant of an infringing trademark or administrative invalidity proceedings throughout an infringing trademark’s lifetime. NIPO also offers a free digital alert service through their website, giving you ample opportunity to detect any possible infringements.

Apart from NIPO, who also handle infringement cases on patents, designs and business names, there are also other administrative dispute resolution mechanisms when it comes to areas such as domain name infringements (the Alternative Dispute Resolution Committee under Norid) and cases concerning other ‘malpractices’ in business relations (the Council Dealing with unfair Marketing Practices).

In total there are several possible avenues for efficient legal brand and reputation management in Norway.