Norway Norvège Norwegen. Report Q191. in the name of the Norwegian Group by Toril MELANDER STENE

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1 Norway Norvège Norwegen Report Q191 in the name of the Norwegian Group by Toril MELANDER STENE Relationship between trademarks and geographical indications Introduction Norway is an EFTA State and thus a Member of The European Economic Area (EEA). EEA was established by an agreement between the EFTA and the EU countries and unites the 25 EU Member States and the three EEA EFTA States (Iceland, Liechtenstein and Norway) into an Internal Market governed by the same basic rules. The objective of the EEA Agreement, as laid down in Article 1, is to promote a continuous and balanced strengthening of trade and economic relations between the Contracting Parties with the view to creating a homogenous European Economic Area. The EC regulatory system on Geographical Indications (GIs) for Wines and Spirits (EC Regulation No 1493/99 of 17 May 1999 on the common organisation of the market in wine the Wine Regulation (the Wine Regulation)) applies to Norway due to its membership of the EEA. The Wine Regulation is implemented in Norway through the Norwegian wine and spirits regulation, which is based on section 2 of the Act on Quality of Control of Agriculture products etc. Norway has also established a registration system for GIs inspired by the EU system for registration of GIs for agricultural products other than wine and spirits. The Norwegian Regulation on the Protection of Designations of Origin, Geographical Indications and Designations of Specific Traditional Character of Agricultural Foodstuffs (the Protection Regulation), applies to agricultural foodstuffs, with the exception of protection of geographical indications and designations of origin for wine products and spirit drinks. The Protection Regulation has rules for protection of geographical indications (PGI) and designations of origin for agricultural foodstuffs (PDO). The regulation also provides for protection for specific character for agricultural foodstuffs (TSG). The main purposes of the Protection Regulation are: Development of regional and specialised production, intended to increase the diversity in the agricultural production, and contribute to a development of remote areas. Give marketing support to the producers and help them to differentiate their production and protect their products. Give reliable information to consumers who regard origin or production method as important. The Protection Regulation is based on the Council Regulation (EEC) No 2081/92 of 14 July 1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs. Additionally it is based on The Council Regulation (EEC) No 2082/92 of 14 July 1992 on certificates of specific character for agricultural products and foodstuffs. These Council Regulations are not a part of the EEA agreement. The Protection Regulation came into force on 5 th July So far the Norwegian Food Safety Authority being responsible for the registration system has received 19 applications for protection of GIs, of which three has been granted and one declined. 1

2 Questions I) Analysis of current legislation and case law 1) Do your country s laws have enactments or systems dealing specifically with GIs, e.g. a registration system for GIs? If so, what are the criteria of registrability? To which national authority must an application for protection be made? Does the applicant have the right to appeal against the refusal of the national authority to register a GI? If so, to which entity? A registration system for GIs is available under Norwegian laws. Equivalent to the EU system, the term GIs refers to both protected designations of origin (PDOs) and protected geographical indications (PGIs). The Norwegian registration system for GIs also covers registration of traditional speciality guaranteed (TSGs). The criteria of registrability for GIs under Norwegian laws are more or less the same as the criteria for registration under the EU system. A PDO may be registered under the Norwegian system if the following conditions are fulfilled: the designation must indicate the name of a region or a specific place, the product that is presented under the designation must originate in this region or this specific place, the qualities, reputation or other characteristics of the product must essentially or exclusively be attributable to the region s or place s geographical environment with its inherent natural and human factors, and the product must be produced, processed and prepared in the specific region or specific place. A PGI may be registered under the Norwegian system if the following conditions are fulfilled: the indication must state the name of a region or a specific place, the product that is presented under the indication must originate in that region or specific place, the product s specific qualities, reputation or characteristics can be attributable to that geographical origin, and the product is produced, processed or prepared in the defined geographical area. An application for registration of a GI must be made to the Norwegian Food Safety Authority. The applicant has the right to appeal against the refusal of the Food Safety Authority to register a GI. The appeal is heard by either the Ministry of Agriculture and Food or the Norwegian Ministry of Fisheries and Coastal Affairs. 2) What is the status of a GI in your country? Does the registration of a GI confer a property right? Who would be the rightholder of a GI? Can GIs be the subject of dealings such as assignment, mortgage and licensing? The registration of a GI under Norwegian laws confers a property right upon the rightholder. The typical rightholder will be an association of producers and / or processors working with the same foodstuff. A natural or legal person that is not an association may also in exceptional and well founded cases obtain a registration of a GI. A protected GI under Norwegian laws can probably not be subject of dealings such as assignment, mortgage and licensing. Any natural or legal person can however use a protected GI subject to the conditions laid down in the Norwegian laws and the regulations in question. Such use is subject to advance approval from the Norwegian Food Safety Authority. 2

3 3) Is the application for or registration of a GI made public in your country? Is it possible to oppose such application or registration or cancel such registration of a GI? If so, by whom and on what (absolute or relative) grounds (e.g. generic or descriptive term or prior trademark)? Applications and registrations of GIs are made public in the Norwegian Trademark Register and on the webpage administrated by the Norwegian Food Safety Authority ( It is possible to oppose such applications and registrations on both absolute and relative grounds (e.g. prior trademark). 4) Must use requirements be satisfied in order to maintain GI protection? If so, is there any definition of what constitutes use? Are the legal rules established for appraising the maintenance of a trademark registration applicable to the appraising of the maintenance of GI protection? Any natural or legal person having a legitimate interest may request cancellation of a Norwegian GI protection, giving reasons for the request. The registration shall be cancelled or declared invalid in so far that the registration is in conflict with the Protection Regulation. The said laws do not contain any use requirements. Thus, a Norwegian GI protection cannot be cancelled due to non use. 5) What is the scope of protection of a GI? Is it only protected against use of the name or also against use of elements of the specification of the GI (e.g. slicing, grating) or any other practice liable to mislead the public as to the origin of the product (e.g. use of same trade dress)? Are the legal rules established for determining the scope of trademark protection applicable to determining the scope of GI protection (e.g. in relation to reputed or well known GIs, likelihood of confusion, infringing and non infringing acts)? May rights in a GI be enforced even where a product which allegedly infringes those rights has been made purely for export? The scope of protection of a GI under the Protection Regulation is similar to the protection granted under the EU system. A GI is protected against: any direct or indirect commercial use of a registered name in respect of products not covered by the registration in so far as those products are comparable to the products registered under that name or in so far as using the name exploits the reputation of the protected name; any misuse, imitation or evocation, even if the true origin of the product is indicated or of the protected name is translated or accompanied by an expression such as style, type, method, as produced in, imitation or similar ; any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned and the packing of the product in a container liable to convey a false impression as to its origin; any other practice liable to mislead the consumer as to the true origin of the product. Some of the rules established for determining the scope of trademark protection is applicable to determining the scope of GI protection under Norwegian laws. For instance, where a GI contains a generic term, the rightholder cannot prohibit others from using the generic term on similar foodstuff. Nor can the rightholder prohibit others from using his name or the name of his business or his address in the course of trade in accordance with fair trade practice. 3

4 6) Can a GI be registered as individual trademark? If so, under what conditions? A registered GI will qualify as a legal bar to the registration of an individual trademark in Norway. A trademark may not be registered in Norway if it includes official or foreign certification or hallmarks, cf. the Norwegian Trademark Act section 14 nr. 3. The Protection Regulation also states that a trademark shall be denied registration if it conflicts with an earlier GI protected subject to the Regulation. An unprotected GI may be registerable as an individual trademark. However, a trademark which consists of or contains a GI which indicates the geographical origin of the goods or is misleading to the public as to the geographical origin of the goods, is not registerable in Norway. Notwithstanding, an unprotected GI can constitute a valid trademark if it has become distinctive of the applicant s goods as a result of extensive use. 7) Do your country s laws provide for collective or certification marks? If so, under what conditions can a GI be registered as a collective mark or a certification mark? Registrations of collective or certification marks are available under Norwegian laws. An association may give its members exclusive rights to use a trademark or other symbol for their goods and/or services. Such associations could be for example an association of painters, doctors, horse trainers, etc. Government bodies, foundations, companies and other entities which carry out periodic inspection of goods and services may also register a collective mark, as may bodies which set standards for goods and services. The mark may be used on goods to which the standard applies, for example an environmental mark, a control mark, etc. A registered GI will also qualify as a legal bar to the registration of a collective mark or certification mark. The Trademark Act applies to collective mark or certification mark in so far that the said act is suitable. Thus, an application for registration of a protected or unprotected GI as a collective mark or certification mark will be denied in so far as an application for an individual trademark will be denied, cf. the answer to question six above. 8) Does inclusion of a protected GI as part of a trademark qualify as legal bar to the registration of such trademark? Yes. A trademark or a collective mark cannot be registered if the mark, when used in the course of trade, is liable to be confused with a protected GI and the application for registration of the mark is submitted after the date of submission of the GI registration. 9) Do your country s laws, e.g. trade or merchandise legislation, require the application of correct designations of origin/source on agricultural products and food stuffs? According to the Norwegian central regulation on labelling of foodstuff, which among other things implements EU Directive 2000/13/EC relating to the labelling, presentation and advertising of foodstuffs for sale to the ultimate consumer, highly perishable foodstuffs shall be labelled with place of origin or provenance, where the omission of such information might mislead the consumer. For instance, soft and hard fruits, vegetables and potatoes shall be labelled with trade description and country of origin. 10) How are conflicts between trademarks and GIs resolved under your country s laws? Do they co exist or does either the trademark or GI prevail? Is there a rule for determining whether the trademark or GI should prevail, and what are the criteria to take into account (e.g. the first in time, first in right rule, the reputation of the geographic region or the reputation of the trademark, the length of time that the name has been used to indicate the geographic region and the extent of such usage, the length of time that the trademark has been used and the extent of such usage)? 4

5 II) Conflicts between a mark and an earlier GI are solved as described above under the answer to question 8. Conflicts between a GI and an earlier mark are solved by using a restricted version of the principle of first in time, first in right. Thus, an earlier mark will to a high degree hinder the registration of a GI, but situations of co existence may occur. Well known mark is given further protection than other marks. Proposals for adoption of uniform rules The Groups are invited to put forward any proposals for adoption of uniform rules regarding the relationship between trademarks and GIs. More specifically, the Groups are invited to respond to the following questions: 11) Should countries provide for registration systems dealing specifically with GIs? If so, what should the key features of such system be? Should a multilateral system of registration of GIs be established? If so, what should the key features of such multilateral system be? Specifically, which international body should be tasked with establishing such system? How should the application for or registration of a GI be notified/made public (either in your country or at a multilateral level) in order to avoid that a trademark may conflict with a GI previously unknown to the trademark owner? A multilateral system of registration appears to have several advantages. However, the establishment of a multilateral system that would lead to binding protection in all member states may be premature. GIs may however be administered by a system of protection similar to other systems of IPR, e.g. the Madrid System for the International Registration of Marks. Such a system may be administered by the International Bureau of WIPO and the application for or registration of a GI should be notified/made public in the WIPO Gazette of International Marks. 12) Do you have any suggestions as to the acquisition, maintenance, scope and enforcement of GI protection? What should the scope of protection of a GI be? Should the legal rules established for appraising the acquisition, maintenance, scope and enforcement of trademark protection apply to the appraising of the acquisition, maintenance, scope and enforcement of GI protection? The Norwegian Group is in favour of a system with the same key features as the EU registration system. 13) Should a protection of GIs by individual and/or collective or certification marks be possible? Protection of GIs by individual should be allowed in exceptional and well founded cases. Collective or certification marks should not be possible for GIs that fall within the scope of the registration system in order to avoid conflicts between protected GIs and collective or certification marks. 14) How should conflicts between trademarks and GIs be resolved? Please propose a specific rule for determining whether trademark or GI should prevail, which is likely to be broadly accepted. If co existence is contemplated, should such co existence be limited to the country of origin or relate to the relevant markets? The Norwegian Group is in favour of a system based on the EU system which provides for co existence between a prior trademark and a later GI (but not vice versa), cf. EC Regulation 510/2006 Article 14, unless the earlier mark has acquired reputation prior to the date the GI has been established or recognised as such. Co existence should be limited to the relevant market. 5

6 Summary The establishment of a multilateral system following for instance the proposal for a multilateral system for registrations of GIs for wines and spirits based on article 23.4 of the TRIPS Agreement may have certain advantages, but appears to be premature. The establishment of a system that follows a Madrid like approach is probably more likely to be accepted. Such a system ought to be administered by the International Bureau of WIPO and the application for or registration of a GI should be notified/made public in the WIPO Gazette of International Marks. With respect to uniform rules regarding conflicts between trademark and GIs, the Norwegian Group is in favour of rules based on the EU system which provides for co existence between a prior trademark and a later GI (but not vice versa), cf. EC Regulation 510/2006 Article 14, unless the earlier mark has acquired reputation prior to the GI has been established or recognised as such. 6