Faced with trademark infringement in Norway? What to do?
If you work in marketing, you know the value of a good brand. It is the foundation of everything you do. It is the trademark that enables the market and customers to know who is behind the product or service. If someone else uses the trademark you have exclusive rights to, you must react. But how? There can be several ways to resolve a dispute, and the marketing department has an important role here.
In most cases, you will benefit from obtaining assistance from an IP lawyer or advisor. A lawyer will be able to litigate the case for you and take care of the legal aspects, and there are also many strategic and tactical assessments that need to be made. Experience from similar cases is important in this case.
Regardless of how the case proceeds, it will be useful to get a proper assessment: How strong is your case if you want to pursue what you believe is a trademark infringement? And what are the risks associated with pursuing the infringement?
What is trademark infringement?
Trademark infringement occurs when someone uses your registered trademark or trademark established by use, or similar mark, without your consent. Nevertheless, it is not always clear whether infringement has occurred.
In some cases, a trademark infringement will appear obvious. Let’s look at an imaginary scenario: If a new supplier launches a type of potato chips or snacks under the name Kims, this would seem like a clear infringement of Orkla’s registered trademark rights for the trademark Kims. Still, one can never be 100 percent sure until the case has been decided by the court, but in this example, the infringement of the trademark seems obvious.
In principle, anything that can be associated with a company can function as a trademark. Names, slogans, logos, colors, sounds or other characteristics may be trademarks, and thus exposed to infringement.
Competitors or other entities might use words, names, graphical elements or other signs that create a risk of confusion, even if it is not considered a direct copy or plagiarism. You will need to evaluate the infringement against your brand’s scope of protection. This assessment is best done by an expert in trademark law.
The trademark is registered, but how strong is the protection?
The strongest protection is provided if the trademark is registered with the Norwegian Industrial Property Office. The registration provides exclusive rights for commercial use within certain limits. No one else can use identical or similar trademarks on the same or similar type of goods and services. The exclusive right applies throughout Norway, and you have the right to enforce this, i.e. pursue any infringements of this right.
A trademark is registered for certain groups of goods or services, called classes. As a result, we see many examples of similar trademarks, though they are used for different goods or services.
The term Nordic is an example of a word that normally has weak protection in a trademark context, and we also see that a number of different companies market themselves with Nordic within widely different goods and services. Purifiers, doors, exercise equipment and garden products all use the name Nordic. Therefore, there is also little risk of confusion in the market.
Document the trademark infringement
Regardless of the reality and the degree of seriousness of the infringement, it is important to document it.
The list of all relevant forms of documentation is long. For example, screenshots, prints, photo or video recordings are simple and effective steps that should be taken, even if the infringement dispute should never end up in court.
Good and systematic documentation of where, when and to what extent the infringement has taken place will also be a good basis for any compensation assessment and claim process.
Get in touch with the person or company responsible for the trademark infringement
Once you have discovered the trademark infringement, it would be beneficial to initiate a dialogue with the person or company you claim is responsible for the infringement. In many cases, a dispute can be avoided or resolved with the help of good communication.
There are cases where there is obvious infringement on your trademark, but the infringer claims this is due to lack of knowledge about your brand. The sooner you start a dialogue with this person or company, the less resources may be used by both parties, and it is usually easier to reach a solution.
One solution could be to license your brand, thereby creating a source of income out of what at first looked like a harmful trademark infringement.
A dialogue may also involve a so-called warning letter, where you make it clear that your trademark rights have been infringed (claim infringement) and demand that the production, sale and marketing of the product or service in question must cease.
Such letters are internationally known as “cease and desist” and are precisely intended to get the other party to “cease and desist” from doing the infringement. This is also important documentation regardless of the further process, and experience shows that such a letter can often be enough to resolve the dispute to everyone’s satisfaction.
When contact with the infringer is not successful
If you have contacted the alleged infringer, perhaps also sent a warning letter, but the improper use of your trademark continues, it is possible to take further steps.
You are in a situation where consumers and the market may mistake the infringing products for yours, potentially damaging your brand. It is important to act quickly, and you may consider taking the case to court for a preliminary injunction, where the court grants the intervener a sales and marketing ban for the product or service.
In some cases, it may be necessary to take further legal action, and there are several examples from Norwegian law where major companies have used the legal system to settle trademark disputes.
If the infringing trademark is also registered, a mistake may have been made by the Norwegian Industrial Property Office, and it is possible to file an official request for repeal of the other trademark.
For any measures in context with the trademark infringement, i is important that you react quickly, and seek assistance from expert advisors. The value of your trademark significant and this ownership should be managed and enforced, just like any other asset. Intangible assets are a competitive strength, and there is no reason to let others weaken your strength.
The role of the marketing department after trademark infringement
Regardless of how the process unfolds, the marketing department will have a central role in clarifying the brand and ownership to the market. The marketing department should use its knowledge of relevant channels to monitor and document trademark infringement. In addition, you can allocate resources to inform the market through earned, paid, and owned channels. Also, don’t forget to demonstrate ownership in the infringer’s preferred channels of marketing and communication.