The administrative measures serve as an alternative to initiating court proceedings. They are often less expensive compared to a full court proceeding.
Depending on the case, an administrative review may lead to the cancellation or revocation of the IP right. The result of the cancellation of an IP right is that it is deemed never to have existed. Revocation means that the right has been valid, but that it ceases to exist from the date the request for revocation was submitted.
The following administrative measures exist within the field of IP:
Administrative review; An administrative review of a patent may be filed by anyone who wishes a patent to be found invalid in full or in part.
This measure is similar to an opposition, but an administrative review can only be based on a lack of novelty and inventive step. There is no deadline for submitting an administrative review, but the opposition period for the patent must have expired. In some circumstances, it is also possible to request an administrative review even if the patent has ceased.
Administrative patent limitation of a granted patent is an alternative for the patent holder in order to limit or withdraw a granted patent. This may be an alternative when the patent holder needs to limit the scope of patent protection. Administrative patent limitation may be requested after the opposition deadline has expired and, in some cases, also after the patent has expired.
The requirements for the registration of designs are not examined by the Norwegian IPO or the EUIPO, hence the possibility of requesting the cancellation of a design registration by way of an administrative review can be an important mechanism against designs which should not have been registered. It is important in these cases that the cancellation applicant submits proof as to why the registration does not fulfill the registration requirements, alternatively why the registration is an infringement of the cancellation applicant’s own rights.
Revocation due to non-use is an important mechanism in the European trademark system. Under this mechanism a trademark registration can be revoked if the registration has not been taken into genuine use for the registered goods/services within 5 years after registration. The genuine use requirement has been introduced to prevent prior rights holders who are lacking a commercial interest in the mark from blocking others from using or registering the same or similar marks.
Cancellation of a registration is possible if the mark for example has been registered despite its lack of distinctive character or because there exist prior rights preventing registration.
A registration can also be revoked if the mark has become the commonly used term within the relevant business sector (degeneration).
A prior sign (registered or unregistered trade mark, company name) which is protected in Norway can be used as a basis to cancel a later and conflicting company name registration by way of an administrative review.
The proprietor of the earlier sign must file the administrative review within three years after registration of the later company name. If the administrative review is successful, the company name must be changed. The three year deadline is important; if the three year period has expired, a prior rights holder instead has to initiate regular court proceedings in order to have the later company name changed.
It is not uncommon that the proprietor of a trade mark discovers that a third party has registered the trade mark as a domain name. If the domain name is identical with the trade mar or there is a likelihood of confusion with the trade mark, and if the trade mark proprietor is able to prove that the domain name registration was made in bad faith, the trade mark proprietor may demand that the domain name is transferred to them or that it is deleted.
Complaints against .no domain names must be submitted to Norid within three years after registration of the domain names. If the three year period has expired, the rights holder has to present its claim to the relevant court.
If the domain name e.g. is a gTLD (generic top.level domain) such as .com, a complaint must be submitted to WIPO.
What can Protector offer?
We have extensive experience in handling administrative measures within all the above mentioned IP fields. We handle cases ourselves before the Norwegian IPO, the European Patent Office (EPO), the European Intellectual Property Office (EUIPO) and WIPO in relation to domain name complaints. We also assist our clients in such cases in other jurisdictions via a network of local partners.