Opposition in a trademark case
Anyone who believes that a trademark has been registered on an incorrect basis can submit an opposition.
What is an opposition?
Anyone who believes that the decision to register a trademark is not correct can submit an opposition to the registration decision to the Norwegian Industrial Property Office, NIPO.
You can also submit an opposition against an international trademark registration that has been given effect in Norway. The person who submits such an opposition is called the opponent.
How can the opposition be justified?
An opponent can justify his opposition by:
- the trademark is registered in violation of the Trademarks Act §§ 14 – 16
- the trademark must be transferred to him, see § 28 of the Trademarks Act
There is no requirement of a legal interest in submitting an opposition. This means that anyone can submit an opposition to the NIPO.
When must the opposition be submitted?
An opposition must be submitted to the NIPO within three months from the registration announcement date.
If it has been more than three months since the registration was announced, you can submit a claim for administrative review of the registration.
What must the opposition contain?
An opposition must contain:
- the opponent's name and address
- which registration the opposition applies to
- on which grounds the opposition is based
- necessary documentation of conditions invoked in support of the opposition
These formal requirements follow from Section 26 of the Trade Marks Act.
What does an opposition cost?
It costs nothing to submit an opposition. You cannot claim to have your legal costs covered by the other party.
How does an opposition case proceed?
When the formal requirements for an opposition have been met, we will forward the opposition to the owner or the owner's representative. The holder is the holder of rights to the registration against which an opposition has been submitted.
We will give the owner a deadline to comment on the opposition.
The NIPO can also grant a deadline extension in the case, if the parties (opponent and proprietor) agree to this and submit a joint petition to this effect. This is relevant, for example, in cases where the parties have started negotiations for an amicable solution.
The parties can come to an agreement and end the case before the NIPO has finished processing the opposition case.
What opportunities does the holder have to counter an opposition?
The owner can counter an opposition by responding to the grounds on which the opposition is based, see section 27 second paragraph of the Trademarks Act. In addition to this, the holder has the following options:
If the opponent claims that the proprietor's trade mark does not have distinctive character according to section 14 of the Trademarks Act, the proprietor can reply that the trade mark has acquired distinctive character through use before the day on which the opposition was submitted.
If the objector 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 29 of the Trade Marks Act, first paragraph, last sentence.
If the opposition is based on the fact that the trademark is registered in conflict with the opponent's older trademark or older company name, the holder can demand that the opponent documents that the older right has been put into real use, see section 29 a of the Trademarks Act.
This option only applies if, on the application date or the priority date for the owner's mark, more than five years have passed since the final decision on registration of the opponent's mark. If the proprietor's mark is an international registration, the international registration date, priority date or subsequent designation date will be decisive.
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It is the opponent who has the burden of proof that the characteristic on which the opposition is based has been put into real use. This means that the person who has submitted an opposition to the NIPO must prove that the opponent or someone with the opponent's consent has put the mark into real use.
If an opponent 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 opponent's older sign will not be able to cause the owner's registration to be revoked. In such a case, the opposition must be rejected, and the registrations remain side by side.
If, on the other hand, an opponent documents real use of his trademark, the NIPO 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 marks is an interference with the opponent's right to a trade mark or a company name, for example if the distinguishing marks of the parties can be confused.
According to Section 35 b of the Trade Marks Act, the owner can respond to the opposition by claiming that the opponent'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 such distinctiveness that there was a risk of confusion
- was not well known
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The starting point for the assessment of these terms 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 proprietor who must prove that the opponent's characteristic was not an obstacle to registration for the proprietor's trade mark at the time of application/from the priority date.
If this leads to success, we will reject the opposition and the registrations will remain side by side.
The owner can voluntarily ask the Swedish Patent Office to delete their registration in whole or in part.
If such a deletion renders the objection case "moot", that is to say that the grounds to which the objection relates cease to exist when the registration is deleted in whole or in part, we will close the objection case.
If the proprietor's mark is an international registration, it must be canceled through WIPO.
In summary: What must the holder answer in an opposition case?
The person who is the holder of the registration against which an objection is made can counter the opposition by:
- respond to the grounds put forward by the opponent
- require documentation for actual use (Section 29 a), or claim that the older trademark lacked distinctiveness/was not well known when the trademark was registered/had priority (Section 35 b).
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 objector has otherwise asserted in the case will remain unchallenged. The holder should therefore respond to all the claims made by the opponent.
What must the opponent answer/document in an opposition case?
If the holder responds to the opposition by claiming that the opponent's registered characteristics have not been put into real use, or states the grounds in section 35 b, then the opponent must counter these and document the grounds.
Will the NIPO request documentation in opposition cases?
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.
If the opponent responds and submits documentation in the case, the NIPO will assess whether the holder should be given a deadline to comment on the opponent's documentation.
When will the NIPO make a decision?
When the parties have been given the opportunity to comment on the case, and further correspondence is not necessary, the case will be taken up for decision.
In its decision, the NIPO will consider all grounds in the case.
Can the NIPO's decision in the opposition case be appealed?
You can appeal the NIPOe's decision to the Norwegian Board of Appeal for Industrial Property Rights (KFIR).