Regulations for documentation requirements in trademark cases

As a rule, you must document all your claims or statements that are of importance for the case. For instance, The Norwegian Industrial Property Office cannot assume that the right to a trademark has arisen due to incorporation unless this is documented. Ref. Norwegian Trademarks Act, Section 3, third paragraph.

We must take into account the "effects of use" of the trademark when assessing if a trademark can be registered. You must document that such an effect of use exists. Ref. Norwegian Trademarks Act, Section 14, third paragraph. 

The requirement for documentation means that the right to the trademark can only be transferred if the details of the right are "vindicated". Ref. Norwegian Trademarks Act, Section 28. 

An opposition must contain necessary documentation for the circumstances invoked in support of the complaint. Ref. Norwegian Trademarks Act, Section 26, second paragraph letter d. 

The statutory provisions state that if you claim to have a trademark right, you must provide documentation to support this (proof requirement and burden of proof). It is not sufficient that you claim there is little doubt that the trademark is in use, established by use or well known. As a minimum, it is required that you refer to one verifiable source, for example an article in a serious newspaper or magazine, an advertising brochure or the like. If you refer to a website, you must attach a dated printout from the page. 

Note that signs that consist exclusively of a form that follows from the nature of the goods, are necessary to achieve a technical result or add significant value to the goods, cannot be established by use. Ref. Norwegian Trademarks Act, Section 2, second paragraph. 

Documentation for the use of a trademark can affect: 

• whether you can obtain a trade mark registration (in case of lack of distinctiveness) 
• whether you have a trademark right (protection and scope of protection – obstacles for registration or grounds for invalidity) 
• whether you are the rightful owner of the trademark 
• whether your trademark rights should continue or cease (duty of use, degeneration, etc.) 

Submission of documentation is, among other things, relevant in the following cases: 

• When registering, account must be taken of the effect of use. Ref. Norwegian Trademarks Act, Section 14, third paragraph. .
• A right that is established by use exists. Ref. Norwegian Trademarks Act, Section 3, third paragraph .
• A well-known trademark exists. Ref. Norwegian Trademarks Act, Section 4, second paragraph.
• The trademark has been put into use and the applicant was aware of this use. Ref. Norwegian trademarks Act, Section 16, letter b .
• The trademark has been put into real use. Ref. Norwegian Trademarks Act, Section 37
• You or the objector are the rightful owner of the mark. Ref. Norwegian Trademarks Act Section 21 and Section 28.
• The trademark has degenerated, and more. Ref. Norwegian Trademarks Act, Section 36.

In principle, all documentation showing actual use of a trademark will be relevant for the assessment. Examples:

• Invoices, advertising budget, sales figures, market share and market research 
• Advertising material, such as brochures, publications, leaflets, newspaper advertisements, radio and television advertisements and the like 
• Use of the trademark on the Internet, such as on websites and advertising on blogs or other communication websites 
• Media coverage, such as newspaper clippings, weekly magazine articles and radio and television commercials 
• Agreements between the parties 
• Annual statements and other official documents 
• Packaging, labels and the like 
• Dealer statements and witness statements (We rarely receive these, and they are normally given little weight, cf. the EU Court's T-262/04 Bic, premise 78 et seq. and Lassen/Stenvik: Kjennetegnsrett p. 254 (256).) 

In the EU Court of Justice case C-25/05 P, August Storck KG v. OHIM, it was stated in premiss 75: 

"... in order to assess whether a mark has acquired distinctive character following the use which has been made of it, the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long- standing use of the mark; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations..."

The statement above gives a general expression of what the documentation must show in relation to whether a trade mark has achieved distinctiveness. The same factors must be taken into account when assessing whether there is an obstacle for registration or grounds for invalidity, and whether the protection has ceased. 

The documentation must show:

Actual use of the trademark (brand use)

• Actual use of the trademark (brand use). The trademark that you wish to register must be used as a distinguishing feature and not as a descriptive term or exclusively as a company name. The trademark being used must be approximately the same as the trademark that is to be registered. But documentation showing that the trademark has been used together with other elements may be relevant, cf. C-353/03, "Have a break...have a Kit Kat", premiss 32 and C-24/05, Storck I, premiss 59. The documentation must also show what kind of trademark is incorporated or is well known, so that it is possible to determine the extent of the protection. If the documentation is to show real use, it will be decisive whether the documentation shows use of the mark as it is registered or in a form that only differs from the form in which it is registered in the particulars that do not change its distinctive character. Here, advertising material, use on the internet and media coverage will be particularly suitable as documentation. 

For which goods/services

• The documentation must show which goods and/or services the trademark is used for. The documentation will be decisive for what kind of goods/services the trademark has achieved distinctiveness, the scope of the protection and for which goods/services the trademark has been put into real use. 

When the use has taken place

• The effect of the use before the application date, cf. the Trademarks Act Section 14 third paragraph 
• The right to the incorporated or well-known mark must exist at the time of application, ref. the Trademarks Act Section 7 
• Actual use of the mark must be documented in the last five years before proceedings for deletion are instituted, ref. the Trademarks Act Section 37 
• The legal effects are here linked to specific points of time. The documentation must therefore be dated and show use in the relevant period. Use after the application has been submitted will not be weighted. Exceptions may, for example, be for market research and various declarations made shortly after the time of application, as these will be able to show knowledge of the mark before the application was submitted. 

When it comes to using the mark on the Internet, dated printouts must be submitted. The reason for this is that such websites can be constantly changing and a reference to a web address will therefore only show its use at the time of the visit. Furthermore, such web addresses can disappear or change, and thus lose their documentation value. A useful website for printouts of homepages is www.archive.org. By searching the "wayback machine" on this website, you will see the website as it was on different dates.

The geographical extent of the use

• When it comes todistinctive character, incorporation and well-known brands, the trademark must have been used in large parts of Norway, that is to say in the largest cities and in all parts of the country. A local incorporation can only justify a corresponding local exclusive right, and therefore does not provide a basis for registering the trademark with effect throughout Norway, ref. Annen avdeling's decision no. 7475, Louis Vuitton. A local incorporated right can act as an obstacle to registration, but not as a ground for invalidity. Also when it comes to actual use, the mark must have been used in Norway.

Scope of use

• How much use is needed varies from case to case and from basis to basis. When we assess the distinctive character of the trademark, normal use over many years or intense use over a short period of time could be sufficient. The less distinctive a trademark is, the greater degree of incorporation must be documented. It takes a lot for a descriptive trademark to be sufficiently incorporated as a trademark, ref. Rt. 2005. p.1601, Yellow Pages, premiss 48.

In order to maintain registration protection in the event of real use, only a certain marketing activity is required that shows a mercantile interest in the right. You must therefore document how long the use has lasted and how intense it has been. Sales figures, marketing costs/advertising budget and especially market share are the so-called "hard facts" which are well suited to show the extent of use. When referring to use on internet pages, you must document the number of real visits (unique users) to the website in question. When referring to the number of followers and likes etc. on social media, then it must be confirmed that these users belong to the Norwegian sales circle. Most social media sites have features that allow professional users to extract demographic data.

Who is the rightful owner of the trademark

• Here, previous working relationships and communication/agreements between the parties will be central documentation.

The Dispute Act applies to the conciliation boards and the courts of justice, but since the Norwegian Industrial Property Office's decisions can be tried in a court, there is a close connection between the evidence requirements that apply to the administration and the rules of evidence in civil cases, ref. Graver, Alminnelig forvaltningsrett 3rd ed. p. 488. We refer to the Public Administration Act Section 17 and to the general rules of evidence expressed in the Dispute Act Section 21-6 second paragraph of and Section 21-7 second paragraph. 

It is the responsibility of the person who submits the documentation to explain what the documentation should show. The requirement for explanation must ensure that the case is sufficiently disclosed. 

In cases with several parties, a description of the documentation will enable the other party to become familiar with the material, and counter the claims that the documentation is to support (consideration of contradiction). A description of the documentation will also highlight what is particularly important to the Norwegian Industrial Property Office. In the case of particularly extensive and fragmented documentation which should be seen in context, it may be necessary to attach a description where you systematize the documentation. It is not the task of NIPO to add together larger material to find the total use. 

If the documentation consists of information about use, you must describe where in the documentation the use is explained, in which time period the use was made and where the use geographically took place. The total use must also be added together (summed up). If you deliver a market survey, this must be described. Failure to provide an explanation may result in NIPO not taking the documentation into account. 

Example: If the documentation consists of 70 similar invoices, you must inform that a total of 70 similar invoices have been submitted, at least one of the invoices must be described, you must state the time period the invoices cover, that the invoices show use in Norway and that these in total shows X articles of goods/services sold. If the use of a trademark appears in an article or an advertisement, you must show (mark) where in the article/advertisement the use is expressed. If you have referred to marketing or sales figures over several years, you must state the total extent of use. 

Requirements for several copies of the documentation 

As mentioned above, the consideration of contradiction will be relevant in cases with several parties, including objection cases and claims for administrative review. All documentation that can easily be copied/scanned will be copied and scanned by NIPO, and forwarded to the other party. It is therefore not necessary to send over more than one copy of such documentation. Documentation that cannot easily be copied/scanned, must be submitted in two copies. Examples of such documentation: 

• single documents larger than A4 (21 cm x 29.7 cm) 
• booklets, books, magazines 
• CDs, DVDs 
• physical product samples 

Language requirements

Documents that are attachments to the application can be in Norwegian, Danish, Swedish or English. If the documents are in another language, NIPO may require the applicant to submit a translation into Norwegian within a deadline set by NIPO. NIPO can also require the translation to be confirmed by a stateauthorised translator. However, NIPO may in some cases accept other languages than those mentioned above. Ref. the Trademarks Regulations Section 6. 

Language requirements for subsequent documents

Documents relating to trademark registrations, including documents in cases of opposition, transfer, administrative review or complaints etc., must be in Norwegian, Danish or Swedish. The same applies to documents concerning international registrations from others than the International Bureau, including documents in proceedings for renewed assessment pursuant to Section 48. If the document is in another language, NIPO can demand that you provide a translation into Norwegian within a deadline set by NIPO. Ref. the Trademarks Regulations Section 53. 

Right of access and request that documentation be exempt from public disclosure 

Anyone has the right to see the case documents, ref. The Trademarks Act Sections 25, 31, 48, 51 last paragraph and 76. Certain information can be withheld from the public if you request it, ref. the Trademarks Act Section 25 second paragraph. 

For more information on what can be exempt from the public disclosure, contact the Norwegian Industrial Property Offise. We receive a large number of letters every day. It is therefore important that requests for exemption from public disclosure are clearly stated in the letter's introduction. The topic is dealt with in Lassen/Stenvik: Kjennetegnsrett p. 243 et seq.