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Norwegian Intellectual Property Law: Bryn Aarflot Q&A
WHAT ADVANTAGES DOES BEING A NICHE SPECIALIST AWARD BRYN AARFLOT OVER OTHER NORWEGIAN LAW FIRMS HANDLING INTELLECTUAL PROPERTY (IP) WORK?
THE primary advantage that niche specialist or boutique IP firms, such as Bryn Aarflot, have over generalist law firms handling IP work in Norway lies within their intimate knowledge of the IP system, as well as their in-house technical expertise. For instance Bryn Aarflot, which boasts more than 60 years of experience in filing and prosecuting patent, design and trademark applications and oppositions, has developed a significant body of detailed knowledge and experience of the examination procedures and use of tools and QA systems to ensure correct, safe and highquality prosecution and handling of terms and formalities.
In Norway, none of the generalist law firms have any specific technical expertise and are therefore required to hire technical patent expertise on a case-by-case basis. In the patent area, there exist no law firms that are able to handle filing and prosecution work.
Furthermore, generalist law firms in Norway predominantly work for Norwegian clients, which makes the volume of IP prosecution work rather limited. Therefore, none of the generalist law firms have developed the same level of in-depth knowledge of the trademark, design and patent systems in Norway and elsewhere as the boutique IP firms, such as Bryn Aarflot. Due to the limited amount of work in this field, most of the generalist law firms in Norway have not invested in tailor-made IP docketing systems, and none have made full use of the opportunities offered by such specialist software.
In-house specialist knowledge of the IP examination system is clearly an advantage in regard to enforcement issues, and especially in regard to assessing vulnerability to counter-attacks.
While several generalist law firms have highly competent IP specialist lawyers, their primary area of expertise lies within contentious work and especially in complex infringement matters.
Due to the very international and cross-border nature of IP filing and prosecution work, boutique IP firms such as Bryn Aarflot have developed strong connections with IP firms across virtually all jurisdictions over the world, unrivalled by the generalist law firms.
WHAT HAVE BEEN THE MAIN TRENDS DIVING YOUR IP PRACTICE OVER THE PAST TWELVE MONTHS?
Over the last year, as the effects of the 2008 financial crisis have started to wear off, work has been increasing both in the trademark prosecution and the contentious areas. Most notably, we have been experiencing a significant increase of instructions within the area of counterfeit and illegal parallel import/grey market goods.
As Norway entered into the European Patent Convention in 2008, the number of national patent applications has significantly decreased over the last few years. Due the European Patent Office's examination backlogs, the amount of work related to validation of European patents has been very limited, but we are now also seeing an increase in that area.
In general, we also see a shift from traditional prosecution work towards more consultancy based strategic advice, opinion work and enforcement of rights.
HOW ACTIVE IS BRYN AARFLOT IN CONTENTIOUS WORK? ARE THERE ANY HIGH PROFILE CASES THAT DEMONSTRATE YOUR EXPERIENCE IN THIS AREA?
Norway is a country of only 5 million people, and although its consumers are relatively affluent, the market and also the IP market is limited. Therefore, there exist only a handful of sufficiently qualified specialist IP firms, all relatively small by international standards. Due to the limited number of lawyers in each firm, the main challenge for Norwegian specialist IP firms in regard to handling contentious work is to sufficiently staff the more complex cases.
A clear benefit of the specialist IP firms in terms of handling contentious work, however, is that technical expertise is available in-house, which makes it easier to assemble suitable teams for handling contentious work in the patent area and other cases requiring technical expertise.
At Bryn Aarflot, we have spent the last few years hiring several lawyers with extensive experience from IP departments at major full-service law firms. Therefore, we consider our staff to be among the most qualified for handling contentious issues in the Norwegian IP specialist market.
Also, our patent attorneys are regularly hired by generalist law firms to assist in contentious work in the patent area.
WHAT TIPS DO YOU OFFER FOREIGN CLIENTS LOOKING TO PROTECT THEIR IP RIGHTS IN NORWAY, OR THE NORDIC REGION AS A WHOLE?
Since Norway is not part of the European Union, the Community Trademark system or the Community design system, it is extremely important to remember Norway when securing trademark and design rights in Europe, either by national applications or designations under international registrations. In terms of trademarks, Norway is a "first-to-file" country, and mere use of a mark does not establish any trademark rights. Trademark protection can be established through use alone, but protection is obtained only once the mark becomes "well known" (in practice "famous") among the relevant consumers.
Notably, there is no intent-to-use requirement for trademarks in Norway. However, use-requirements apply five years after the final registration date, and registrations may thereafter be (partially) cancelled by third parties in regard to goods/services for which the mark has not been used during a period of five years. Broad identifications of goods, such as class headings, are accepted, but class headings cover only goods that by definition fall under the wording. Partial priority can be claimed. Priority documents are not required for filing purposes.
TO WHAT EXTENT IS LOCAL KNOWLEDGE ESSENTIAL WHEN HANDLING A TRANSACTION IN THIS FIELD?
Knowledge of local language and practice is particularly essential in terms of conducting searches and prosecuting applications, since most prior art is available only in Norwegian. In regard to trademarks, candidate marks must be assessed from the viewpoint of an average Norwegian consumer, and distinctiveness, likelihood of confusion and possible negative connotations of a mark can only be properly assessed by a professional with knowledge of local language and practice.
Although, to a large extent, Norwegian legislation and practice is harmonized with EU law and practice, there are some important exceptions to this rule. In regard to trademarks, it may also be noted that distinctiveness requirements seem to be considerably stricter than in most other European countries, perhaps with the exception of Switzerland.
IS THERE ANY SIGNIFICANT LEGISLATION BEING PLANNED IN THE INTELLECTUAL PROPERTY AREA WHICH CLIENTS SHOULD BE MADE AWARE OF?
A new Trademark Act, introducing inter alia administrative re-examination (invalidity and cancellation) of registered trademarks and representing a modernization of the old act, came into force in July 2010. Moreover, Norway acceded to the Hague system for the international registration of industrial designs in June 2010.
Also, there is preparatory work being done for legislation regarding the strengthening of intellectual property rights, including in the area of compensatory damages and criminal liability in case of infringement.