Deletion of a trademark in the event of non-use - duty of use

A trademark registration can be renewed for ten years at a time. In principle, the registration can last forever as long as it is renewed every ten years.

The registration holder can nevertheless lose this protection if the trademark is not put into real use, or if the use of the trademark ceases. Ref. the Trademarks Act Section 37. 

The mark must be put to use within 5 years after registration 

The owner does not need to start using the trademark immediately after the trademark has been registered at NIPO. The provision gives the holder a period of five years, after a final decision has been made, before the registration can be requested to be deleted. This period, often referred to as the "grace period", can best be described as a "protection period", but is also called the "duty of use period". Only after this period has expired, third parties can request that the registration be deleted. 

No obligation to use the mark

There is no obligation to use the mark. The term "duty of use" is therefore misleading. The provision only means that registered protection can be lost in the event of non-use if someone requires that the registration be deleted. If no one attacks the registration, it remains in force. It is therefore important, both for the owner and third parties, to determine when this five-year period starts and ends. The owner will be able to determine when at the latest the trademark must be put into use in order not to risk losing the registered protection. Third parties will be able to determine when at the earliest a claim for administrative review can be submitted, or a lawsuit for deletion can be brought forward. The provision also applies to international registrations, ref. the Trademarks Act Section 72 third paragraph. 

A registration of a trademark must be deleted in whole or in part by judgment or by administrative review according to the Trademarks Act Sections 38 to 40, if the trademark owner has not, within five years from the day on which the final decision on registration of the trademark was taken, put the trademark into actual use in Norway for the goods or services for which it is registered, or if use has been interrupted for five consecutive years. However, the registration shall not be deleted if there is a just cause for the omission or interruption. 

What is defined as use?

Use of the trademark in accordance with the first paragraph also includes use of the trademark in a form that only differs from the form in which it is registered in particulars that do not change the distinctive character, and use of the trademark in Norway on goods or packaging for export. Use by someone else with the consent of the trademark holder is also considered use by the trademark owner. 

A registration must not be deleted if use of the trademark is started or resumed after the end of the five-year period, but before a lawsuit has been brought forward or a request for an administrative review has been made to have the registration deleted. However, account shall not be taken of use in the last three months before a lawsuit is brought forward or a request for an administrative review is made, if preparations for use have only begun after the brand owner has become aware that a lawsuit may be brought forward or a request for a review may be made. 

A final decision on the registration of the mark has been made when the opposition deadline according to Section 26 has expired, or, if an opposition is submitted, when a final decision has been made in the opposition case, or the opposition has been withdrawn. For international trademark registrations, a final decision on registration has been made when it has been finally decided that the registration shall have effect in this country in accordance with Sections 70 and 71. The Norwegian Industrial Property Office must enter the date when the five-year period begins to run, in the trademarks register. 

In note to Section 37 on page 68 of Ot.prp. no. 98 (2008-2009), it is stated: 

"If an opposition is received against the registration pursuant to Section 26, a final decision on registration is only available when the opposition case has been finally decided, and the five-year deadline for putting the trademark into use in that case runs from the day of such final decision. If there are no oppositions, the registration decision is final when the opposition period of three months has expired." 

Equitable considerations dictate that the period should not start until the holder has a reason to assume that registered protection has been achieved with final effect, see similar assessment in Oslo district court RG-2005-597, TOP SHOP. The owner will have reason to assume this on the day that oppositions to the registration can no longer be submitted or on the day that the decision can no longer be appealed. This is consistent with the preparatory work which refers to the expiration of the opposition period. This implies that the expiry of the appeal period is also used as a basis in those cases where this is relevant. 

The Norwegian Industrial Property Office assumes that the "non-use period", "duty of use period", "five-year period" or "grace period" starts at the following points of time 

Registration and opposition: 

1. No opposition is submitted against the registration: The five-year period starts the day after the expiry of the opposition period, ref. the Trademarks Act Section 37 fourth paragraph. 

2. An opposition is submitted against the registration: The five-year period starts the day after the expiry of the appeal period, ref. the appeal period before KFIR, ref. the Trademarks Act Section 50. If there is an appeal against the decision, see point 4. 

3. The opposition is withdrawn: The five-year period starts at the time of decision for NIPO’s revocation decision or no later than two months plus one day after NIPO received notification that the objection has been withdrawn. Ref. the Trademark Regulations Section 25. 

4. Decisions that are appealed to the Board of Appeal for Industrial Property Rights: 

• The decision cannot be brought before the courts, ref. the Trademarks Act Section 52 third paragraph: The five-year period starts on the day on which the notification on the decision was sent to the relevant party. 
• The decision can be brought before the courts, ref. the Trademarks Act Section 52 second paragraph: The five-year period starts the day after the deadline for bringing the case before the courts expired. It is assumed here that the decision is not brought before the courts, otherwise, see point 6. 

5. The complaint is waived during processing in the Board of Appeal: Same as under point 3, ref. the Trademark Regulations Section 52. 

6. The Board of Appeal's decision is brought before the courts , ref. the Trademarks Act Section 52 second paragraph and Section 62 first paragraph letter a: In opposition cases the five-year period starts the day after a final judgment is issued. 

NB: The appeal deadline may be postponed if it falls during the court holidays. 

Deadlines that fall on public holidays and days equivalent to public holidays 

When calculating the expiration of the opposition or appeal deadline, it is important to remember that if the last day to submit an opposition or appeal falls on 24 or 31 December, a Saturday, a public holiday or a day which according to the legislation is equivalent to a public holiday, then if the deadline is moved to the nearest working day, ref. the Regulation on Fees, Section 6. The five-year period begins the day after the last day an opposition or complaint can be submitted. 

Example : A registration is published on February 16, 2020. The opposition period was 3 months from the date of publication: May 16, 2020. This was a Saturday so the last day to submit an opposition was postponed to the first working day, which in this case was Monday 18 May 2020. The five-year period begins the following day: Tuesday 19 May 2020. 

Only statutory deadlines in the Trademarks Act are postponed to the first working day, ref. the Regulation on Fees Section 6. The first day of the five-year period is not such a statutory deadline. This means that if the last day to submit an opposition or complaint falls on a Friday, the first day of the five-year period will begin on Saturday. 

Example : A registration is published on 15 February 2020. The opposition deadline was 3 months from the day of publication: 15 May 2020. This was a Friday. The five-year period begins the following day: Saturday 16 May 2020. 

It is important to remember that the deadline for submitting an opposition was 2 months in the 1961 Act and 3 months in the 2010 Act. 

Example : A registration that was published on 30 June 2010 will have an opposition period of 2 months, while a registration that was published on 1 July 2010 will have an opposition period of 3 months. The appeal deadline was not changed in the 2010 Act. 

Complaints against refusal cases (ex officio), ref. the Trademarks Act Section 24: 

In cases where the Board of Appeal or a higher authority annuls a decision to refuse a registration, the application is sent back to the First Department for registration. The period begins to run at the points of time indicated in points 1-6, ref. above. The Board of Appeal or a higher juridical body does not make a registration decision, only a decision that NIPO's refusal to register was wrong. The formal registration and publication of the mark is carried out by NIPO. 

Requests for administrative review and independent lawsuits: 

We cannot see that a request for an administrative review or an independent invalidity action under the Trademarks Act Section 35, ref. Section 40 and Section 62 first paragraph letter b, has any significance for the calculation of the period. The period must be based on the points of time specified in points 1-6, ref. above. 

The period shall be calculated from the day on which the final decision "on registration of the mark" was made. This must be understood to mean the original decision to register the mark, not a later decision on the validity of the registration decision. If such a claim or lawsuit is raised during the first five-year period, a failure to use the mark due to these circumstances will possibly be a factor in the assessment of whether there is a just cause for the failure.