World Intellectual Property Organization

Norway

Designs Act (Act No. 15 relating to Design Protection of March 14, 2003, as last amended July 1, 2010)

 

 


Designs Act

Act relating to design protection of 14 March 2003, No. 15 (Designs Act). This is a translation of the Norwegian Designs Act. Should there be any differences between this translation and the authentic Norwegian text, the decision will be made on the basis of the authentic Norwegian text.

Latest amendment 1st July 2010.

Table of contents

Chapter 1 General provisions - Sections 1-12 Chapter 2 Application for registration of design - Sections 13-20 Chapter 3 Public disclosure and the duty to disclose information - Sections 21-22 Chapter 4 The period of validity of a design registration - Sections 23-24 Chapter 5 Review and invalidity, etc - Sections 25-35 Chapter 6 Appeals - Sections 36-39 Chapter 7 Compensation and penalties, etc - Sections 40-45 Chapter 8 Provisions concerning legal proceedings - Sections 46-48 Chapter 9 Miscellaneous provisions - Sections 49-54 Chapter 10 International design registration - Sections 55-59 Chapter 11 Final provisions - Sections 60-62

Chapter 1. General provisions.

Section 1. Exclusive right to design

The creator of a design (the designer), or his successor in title, may acquire by registration an exclusive right to exploit the design subject to the provisions of this Act (design right).

Registration of a design does not exclude protection pursuant to other acts if the requirements for such protection are fulfiled, including protection under the Trademarks Act, the Copyright Act, and the Patent Act.

Section 2. Definitions

In this Act

  1. design means the appearance of a product or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product itself or its ornamentation.
  2. product means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs.
  3. complex product means a product which is composed of multiple components which can be replaced permitting disassembly and reassembly of the product.

Section 3. Novelty and individual character

Design right may only be granted if the design is new and has individual character.

A design shall be considered new if no identical design has been made available to the public before the date of filing of the application for registration or before the date of priority, if priority is claimed pursuant to section 16. Designs shall be deemed to be identical if their features differ only in immaterial details.

A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date referred to in the second paragraph. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

Section 4. Complex products

The design of a component part of a complex product shall only be considered to be new and to have individual character to the extent that

  1. the component part is visible during normal use of the complex product, and
  2. the visible features of the component part fulfil the requirements as to novelty and individual character. Normal use shall mean use of the complex product by the end user, excluding maintenance, servicing or repair work of the product.

Section 5. The design’s availability to the public

A design shall be deemed to have been made available to the public under this Act if it has been published following registration or otherwise. The same shall apply if the design has been exhibited, used in trade or otherwise disclosed. The design shall nevertheless not be regarded as having been made available to the public if

  1. it could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned operating within the EEA through circumstances, as referred to in the first paragraph, before the date of filing of the application for registration or, if priority is claimed, before the date of priority pursuant to section 16, or
  2. it has solely been disclosed to other persons under explicit or implicit conditions of confidentiality.

Section 6. Actions that do not destroy novelty (grace period)

The design is not regarded as having been made available to the public pursuant to section 5 if it has been made available to the public, at the earliest, twelve months prior to the date referred to in section 3, second paragraph

  1. by the designer, or his successor in title
  2. by other persons on the basis of information provided or actions undertaken by the designer, or his successor in title, or
  3. as a consequence of an abuse in relation to the designer, or his successor in title.

Section 7. Design which is contrary to public interests and the rights of other persons

A design may not be registered if it

  1. is contrary to public policy or to accepted principles of morality, or
  2. without authorization includes a coat of arms or other insignia, subject to section 328, first paragraph (4) or second paragraph of the Penal Code, a national flag or an official control or guarantee mark for products of the same or a similar type as the products to which the design applies or which may be perceived as such a symbol, flag or mark.

A design right may not be granted if the design conflicts with a design that is the subject of a previous application for design right in Norway that was not available to the public before the date of filing of the new application or before the date of priority, if priority is claimed pursuant to section 16, but is disclosed at a later date.

Nor may a design right be granted if the design violates the right of another person in Norway to

  1. a trademark, business name or an other sign,
  2. a work or photographic picture protected under the Copyright Act, or
  3. a geographical indication or designation of origin for agricultural products and foodstuffs protected under regulations pursuant to the Act of 17 June 1932 No. 6 relating to quality control of agricultural products, etc or under Act of 19 December 2003 No. 124 on Production of foodstuff and Food safety, etc.

Section 8. Designs dictated by technical function

A design right may not be granted for the features of appearance of a product

  1. that are dictated solely by its technical function, or
  2. that must be reproduced in their exact form and dimension in order to permit the product to be mechanically connected to or placed in, around or against another product, so that either product may perform its function.

A design right may nevertheless be granted for a design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system.

Section 9. The scope and content of a design right

A design right entails that no-one may use the design without the consent of the holder of the design right (the holder), with such exceptions as follow from sections 10 to 12. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

The design right shall apply to any design that does not produce on an informed user a different overall impression. In assessing the scope of the design right, the degree of freedom of the designer in developing the design shall be taken into consideration.

Section 10. Exceptions from the design right

The design right does not exclude that the design

  1. may be used for private and non-commercial purposes,
  2. may be used for experimental purposes, or
  3. may be displayed for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source.

Section 11. Equipment on ships and aircraft

The design right shall not exclude

  1. use of equipment on ships and aircraft registered in another state when these
    temporarily enter Norwegian territory,
  2. importation to Norway of spare parts and accessories for the purpose of repairing such craft and execution of repairs on such craft.

Section 12. Exhaustion of the design right

The design right does not exclude the use of design-protected products that are put on the market in the EEA by the holder of the design right or with his consent.

Chapter 2. Application for registration of design

Section 13. Application for registration

An application for registration of a design shall be filed in writing with the Norwegian Industrial Property Office.

The application shall state the name and address of the applicant and the product or products to which registration of the design is sought, and shall include reproductions clearly illustrating the design.

If the applicant also submits a model of the design prior to its registration, it is the model that shall be regarded as illustrating the design.

The application shall state the name of the designer. The designer’s name shall be entered in the Design Register. If the design is the result of cooperation between a group of two or more designers, the name of the group may replace the name of each individual designer.

The application shall in addition fulfil the requirements laid down by the King in regulations. A stipulated fee shall be paid.

Section 14. Amendment of the application

An application for registration of a design may not be amended to apply to another product than that stated in the application. The design that the application concerns may only be amended if the design in its amended form retains its identity and fulfils the requirements for registration.

Section 15. Application for registration of more than one design multiple registration

An application may include more than one design if the products belong to the same class according to the Locarno Agreement of 8 October 1968 establishing an international classification for industrial designs.

Section 16. Priority

A person who has filed an application for design protection in Norway or in a State party to the Paris Convention of 20 March 1883 for the Protection of Industrial Property or the Agreement of 15 April 1994 establishing the World Trade Organization (WTO Agreement), and who, within six months after, this applies for a design right in Norway, may claim that the new application shall be regarded as filed at the same time as the first application.

A person who has exhibited a design at an official or officially recognized international exhibition as referred to in the Convention of 22 November 1928 relating to international exhibitions and who, within six months after this, applies for a design right in Norway, may claim that the application be regarded as filed on the date when the design was first exhibited at the exhibition.

The King may in regulations lay down further requirements concerning the right to claim priority. The King may also provide that priority may be claimed in cases other than those referred to in the first and second paragraphs.

Section 17. Requirements for registration

The Norwegian Industrial Property Office shall ensure that the application fulfils the requirements laid down in sections 13 to 15. The Norwegian Industrial Property Office shall also ensure that the application applies to a design as referred to in section 2 (1), and that the requirements laid down in section 7, first paragraph, are fulfiled.

To the extent prescribed in regulations laid down by the King, the Norwegian Industrial Property Office shall, at the request of the applicant, also examine whether other factors exist that may prevent design right and, in such case, inform the applicant of this. A stipulated fee shall be paid for this examination.

Section 18. Registration and publication

If the application fulfils the requirements as referred to in section 17, first paragraph, the design shall be registered and notification of registration shall be sent to the applicant. The registration of a design shall be published.

The registration may nevertheless be deferred for a maximum of six months from the date referred to in section 3, second paragraph, if so requested by the applicant in the application.

Section 19. Correction of the application

If the application fails to fulfil the requirements as referred to in section 17, first paragraph, the Norwegian Industrial Property Office shall notify the applicant of this and provide information concerning the possible consequences of the irregularities. The applicant shall be given a reasonable time limit in which to respond and, if possible, for correction of the irregularities.

If the irregularities are corrected within the time limit set by the Norwegian Industrial Property Office, the application is regarded as filed on the date it was received by the Norwegian Industrial Property Office. However, the application is not regarded as filed until reproductions or a model of the design have been received by the Norwegian Industrial Property Office.

If the applicant fails to comment or to correct the irregularities before expiry of the time limit, the application shall be considered abandoned.

Processing of an application that has been abandoned shall be resumed if the applicant submits comments or corrects the irregularities within two months after expiry of the time limit. A stipulated fee shall be paid. Processing of an application may only be resumed once.

Section 20. If the application has

irregularities that are not corrected subject to the provisions laid down in section 19 and the design cannot be registered in its amended form subject to section 14, second sentence, the application shall be refused. This does not apply if the Norwegian Industrial Property Office finds that the applicant should be given a new time limit for correction.

Chapter 3. Public disclosure and the duty to disclose information

Section 21. Access to the documents of an application

From the date an application is filed, anyone may demand access to the application and its enclosures and all documents pertaining to the case, unless otherwise provided in the second to the fifth paragraph.

Access may not be demanded to documents that may reveal the appearance of the design until the design has been registered pursuant to section 18. When six months has elapsed from the date referred to in section 3, second paragraph, the documents shall be made public even if the design has not been registered. If the application is abandoned or refused, the right of access shall only apply if the applicant requests resumption, appeals against the decision or claims compensation.

If the applicant so demands, the documents that may reveal the appearance of the design shall be made public earlier than provided in the second paragraph. Information concerning commercial secrets may be excepted from public disclosure if so demanded by the applicant. When such demands are filed, the information is not made public until a final refusal of the demand. Information of significance for whether a design right may be granted or for the scope or duration of the design right may not be excepted from public disclosure.

Documents prepared by the Norwegian Industrial Property Office for its own internal examination of a case may be excepted from public disclosure.

Section 22. The design applicant’s duty to disclose information

An applicant who invokes the design application against another party before the design has been made available to the public shall, if so requested, allow the person concerned access to the documents of the application. A person who in direct communication, in advertisements or otherwise, has made known to other persons that a design right has been applied for or granted without stating the number of the application or registration shall, if so requested, provide the number without undue delay. A person who has provided information that may give the impression that a design right has been applied for or granted shall, if so requested, provide information without undue delay as to whether the design has been registered or whether registration of the design has been applied for.

Chapter 4. The period of validity of a design registration

Section 23. The period of validity of a design registration

A design registration shall be valid for the period or periods of five years applied for in the application, calculated from the application date. A registration valid for a period shorter than twenty-five years may be renewed for further five-year periods up to a total registration period of twenty-five years. Each period shall run from the end of the previous period. For the design of a component part used for the purpose of the repair of a complex product so as to restore its original appearance (spare part), registration shall be valid for a maximum of five years.

Section 24. Renewal of registration

Requests for renewal shall be made in writing to the Norwegian Industrial Property Office no earlier than one year before and no later than six months after the expiry of the registration period. A stipulated fee shall be paid. If the request for renewal is filed after expiry of the registration period, an additional fee shall be paid. Payment of the renewal fee within the time limits laid down in the first paragraph, stating the registration number of the design, shall be regarded as a request for renewal.

The renewal of a registration shall be entered in the Design Register and be published.

Chapter 5. Review and invalidity, etc.

Section 25. Administrative review and review by a court of law

If a design fails to fulfil the requirements laid down in sections 2 to 8, the design registration shall be wholly or partly cancelled by the Norwegian Industrial Property Office or be invalidated by a court of law pursuant to the provisions of sections 26 to 28. If the design has been registered for someone other than the person who is entitled to obtain registration of the design, the registration shall be cancelled pursuant to the provisions of sections 26 and 27 or be transferred to the rightful holder pursuant to sections 29 and 30.

The registration may not be cancelled or invalidated on the basis that the holder has only partial right to the design.

Section 26. Time limits and requirements regarding association with a case

An administrative review may be requested by anyone during the period of registration unless otherwise provided by the second and third paragraphs.

A request for administrative review may only be filed by

  1. a person who claims the right to the design if such claim is founded on the assertion that the holder is not entitled to hold the right to the design.
  2. a person who applies for or holds the previous right if the claim is founded on the assertion that the registration violates rights referred to in section 7, second and third paragraphs.
  3. the Ministry or by the person or body affected by the use if the claim is founded on the assertion that the registration violates rights referred to in section 7, first paragraph (2).

If the claim is founded on the assertion that the holder is not entitled to hold the right to the design, it must be put forward at the latest one year after the person making the claim learned of the registration and the other circumstances on which the claim is founded. If the holder acted in good faith when the design was registered or when the registration was transferred to the holder, the claim may not be put forward later than three years after the registration or transfer.

The first to third paragraphs shall apply correspondingly to legal proceedings concerning invalidity.

Legal proceedings concerning invalidity may also be instituted after the registration has lapsed or has been renounced. A person who brings a legal action in such a case must have legal interest in the case.

If a request for an administrative review claiming that the holder is not entitled to hold the right to the design is filed with the Norwegian Industrial Property Office within the time limit laid down in the third paragraph, legal proceedings concerning the question, notwithstanding the third paragraph, may be instituted within two months after the day the notification of the Norwegian Industrial Property Office’s final decision was sent to the party concerned.

Section 27. Filing and processing of requests for administrative review

A request for administrative review shall be filed in writing with the Norwegian Industrial Property Office, stating

  1. the name and address of the person who filed the request,
  2. the registration and, if appropriate, the design in the registration for which a review is requested,
  3. the grounds on which the request is based, and
  4. necessary documentation of circumstances cited in support of the request.

The request shall in addition fulfil the requirements laid down by the King in regulations. A stipulated fee shall be paid.

If the request fails to fulfil the requirements of the first paragraph and section 26, the Norwegian Industrial Property Office shall give a reasonable time limit in which to respond and, if possible, correction of the irregularities. If the irregularities are not corrected before expiry of the time limit, the request shall be refused unless the Norwegian Industrial Property Office finds that a new time limit should be given for correction.

If the request for review is filed by a person other than the holder, the Norwegian Industrial Property Office shall as soon as possible notify the holder of the request, giving a reasonable time limit in which to respond.

If two or more requests for review of the same registration are filed, the Norwegian Industrial Property Office may merge the cases to one case unless objectively justified objections are put forward.

The Norwegian Industrial Property Office may take into consideration circumstances not affected by the request for review. If a request for review is withdrawn, the Norwegian Industrial Property Office may continue processing of the case if special reasons so indicate. This paragraph shall only apply in so far as it is compatible with section 26, second paragraph.

Anyone may claim access to the documents of a case concerning administrative review. The provisions laid down in section 21, fourth and fifth paragraph, shall apply correspondingly.

Section 28. Amendment of a registered design

The registration of a design may be partly cancelled by the Norwegian Industrial Property Office if the design in its amended form retains its identity and fulfils the requirements for registration and if the holder has requested or consented to the amendment.

The registration of a design may on the same requirements be found partly invalid by a court.

The amended design shall be entered in the Design Register and a new notification of registration shall be sent to the holder. Notification of the amendment enclosing reproductions of the design in its amended form shall be published.

Section 29. The right to the design

A person who, in a case concerning administrative review, claims the right to a design that has been registered for another person may claim that the registration be transferred rather than cancelled.

If someone claims the right to a design in an application filed by another person, the Norwegian Industrial Property Office may transfer the application. The person to whom the application is transferred shall pay a new application fee.

If the Norwegian Industrial Property Office finds there to be doubt in a question as referred to in the first and second paragraphs, a person who claims the right to the design shall be encouraged to institute legal proceedings within a reasonable time limit. If legal proceedings are not instituted within the time limit, the Norwegian Industrial Property Office may disregard the claim. The claimant shall be notified of this.

Section 30. Legal proceedings concerning transfer of an application or registration

A person who claims the right to a design in an application filed by another person or to a design that has been registered for another person may institute legal proceedings for transfer of the application or registration. Legal proceedings concerning transfer of a registration must be instituted within the time limit laid down in section 26, third paragraph, cf. sixth paragraph.

Section 31. Right to continued use

If a person who is deprived of registration pursuant to section 29 or 30 has in good faith begun to use the design in Norway or has made extensive preparations to do so, he may continue or commence such use in exchange for a reasonable remuneration and on otherwise reasonable requirements. This right shall apply on the same requirements to holders of registered licences.

Rights pursuant to the first paragraph may only be transferred to other persons in conjunction with transfer of the undertaking in which the right arose or where use was intended to take place.

Section 32. The relationship between cases before the Norwegian Industrial Property Office and before the courts

If proceedings before the Norwegian Industrial Property Office concerning transfer of an application are in progress, the Patent Office may not amend, abandon, refuse or grant the application before the case concerning transfer is finally decided. If the case concerns the right to a design in a registration, the registration may not be cancelled, amended or expunged before such date.

If legal proceedings have been instituted concerning the right to the design, the Norwegian Industrial Property Office shall defer the processing of a case concerning registration, cancellation or transfer until such legal proceedings are decided by a final and un¬appealable judgment. If legal proceedings are instituted concerning invalidity, the Norwegian Industrial Property Office shall defer the processing of a case concerning cancellation until such date.

A person who has requested an administrative review may not institute legal proceedings concerning invalidity or transfer while the case before the Norwegian Industrial Property Office is in progress.

Section 33. Cancellation on the initiative of the Norwegian Industrial Property Office

If the registration of a design or the renewal or amendment of a registration has clearly occurred erroneously, the Norwegian Industrial Property Office may on its own initiative wholly or partly cancel the entry.

The holder of the registration shall be notified with a reasonable time limit in which to respond before cancellation takes place.

Section 34. Expunction of the registration

If a registration is not or cannot be renewed or if the holder submits a written request for expunction, the registration shall be expunged from the Design Register after expiry of the registration period.

If legal proceedings have been instituted concerning transfer of the registration or if the design right is subjected to execution, the registration may not be expunged on the request of the holder before such proceedings are decided by a final and unappealable judgment or the execution lapses.

Section 35. Entry in the Design Register and publication

If a request for administrative review of a registration has been submitted or legal proceedings concerning invalidity or transfer of a registration have been instituted, this shall be entered in the Design Register and be published. When the case is finally decided, the decision shall be entered in the Design Register and be published.

Cancellation of a registration pursuant to section 33 and removal of a registration pursuant to section 34 shall be entered in the Design Register and be published.

The right to continued use pursuant to section 31 shall be entered in the Design Register and be published if so requested by one of the parties.

Chapter 6. Appeals, etc.

Section 36. Appeals concerning the decisions of the Norwegian Industrial Property Office

If, in relation to a design application or a request that an international design registration shall apply in Norway, the Norwegian Industrial Property Office decides against the applicant, an appeal may be made by the applicant to the Norwegian Industrial Property Office’s the Board of Appeals.

The decision in a case concerning administrative review pursuant to section 25 may be appealed to the Board of Appeals by the party that is decided against. If a claim pursuant to section 29 concerning transfer of an application or registration is granted, the decision may be appealed to the Board of Appeals by the applicant or the holder.

A decision to cancel an entry pursuant to section 33 may be appealed to the Board of Appeals by the holder.

The decision to reject or refuse a request for

  1. resumption pursuant to section 19, fourth paragraph,
  2. exceptions from public disclosure pursuant to sections 21, fourth paragraph, 27, sixth paragraph, and 38, fifth paragraph,
  3. access to documents in cases pursuant to this Act,
  4. renewal of a design registration pursuant to section 24, or
  5. reinstatement of rights pursuant to section 50 may be appealed to the Board of
    Appeals by the person who submitted the request.

Other decisions by the Norwegian Industrial Property Office may not be appealed.

Section 37. Filing of appeals

An appeal must be filed in writing with the Norwegian Industrial Property Office within two months after the date that notification concerning the decision is sent to the party concerned. The appeal shall state

  1. the name and address of the appellant,
  2. the decision that is appealed against,
  3. the desired amendment to the decision, and
  4. the grounds on which the appeal is based.

The appeal shall in addition fulfil the requirements laid down by the King in regulations. The stipulated appeal fee shall be paid.

Section 38. Consideration of appeals

Other parties to the case shall be notified of the appeal as soon as possible and be given a reasonable time limit in which to respond.

If the requirements for consideration of the appeal are fulfiled, the Norwegian Industrial Property Office may set aside or amend the decision if it finds the appeal to be clearly justified. If such a decision is not made, the documents of the case shall be sent to the Board of Appeal. If the Norwegian Industrial Property Office sends a statement to the Board of Appeals, a copy shall be sent to the parties.

If the requirements for consideration of the appeal are not fulfiled, the appellant shall be given a reasonable time limit in which to respond and, if possible, correction of the irregularities. If the irregularities are not corrected before expiry of the time limit, the appeal shall be dismissed unless the Board of Appeals finds that a new time limit for correction should be given.

If the appeal is considered, the Board of Appeals shall make the examination that the appeal gives grounds for. It may take into consideration matters not affected by the appeal. If the appeal is withdrawn, the Norwegian Industrial Property Office may continue consideration of the case if there are special reasons for so doing. This paragraph shall apply only in so far as it is compatible with section 26, second paragraph.

Anyone may claim access to the documents of an appeal case. The provisions laid down in section 21, fourth and fifth paragraphs, shall apply correspondingly.

Section 39. Review by a court of decisions made by the Board of Appeals

Decisions made by the Norwegian Industrial Property Office may only be brought before the courts if the right of appeal pursuant to section 36 has been used and the Board of Appeals has decided the appeal. The previous sentence does not affect the right to institute legal proceedings concerning invalidity or transfer pursuant to sections 25 and 30.

The decision of the appeal case by the Board of Appeals may be brought before the courts by the party against which the decision was made unless otherwise provided by the third paragraph. Legal proceedings must be instituted within two months after the date that notification concerning the decision is sent to the party concerned. Information concerning the time limit for instituting legal proceedings shall be included in the notification of the decision.

The decision by the Board of Appeals of cases concerning administrative transfer of an application or registration may not be brought before the courts. The same applies to decisions where the Board of Appeals rejects or refuses a request for administrative review, or upholds a decision of the Norwegian Industrial Property Office concerning rejection or refusal.

Chapter 7. Compensation and penalties, etc.

Section 40. Compensation for design infringement

A person who wilfully or negligently uses a design in contravention of this Act shall pay remuneration to the aggrieved party equivalent to a reasonable licence fee for the use and compensation for further damages that may have been caused by the use.

The remuneration may be reduced and the compensation mitigated if there is little to hold the infringer responsible for.

If the use occurred in good faith, to the extent deemed reasonable, the court may order the infringer to pay remuneration and compensation pursuant to this section. The remuneration and compensation may not exceed the estimated profit of the infringer.

Section 41. Measures to prevent new design infringement

In order to prevent new design infringement, the court may, if so requested by the aggrieved party, decide that products produced in or imported to Norway in contravention of the Act or articles that can only be used for design infringement shall be amended in a specific manner, destroyed or confiscated for the remainder of the protection period. On the same conditions, the court may decide that products produced in or imported to Norway in contravention of the Act may instead be delivered to the aggrieved party in return for remuneration.

The first paragraph may not be applied in relation to a person who in good faith has acquired such products or articles or rights to them, and who is not personally guilty of design infringement.

Section 42. Use prior to registration

If anyone, without the consent of the applicant, uses a design for which registration has been applied and if the use takes place after the documents showing the design have become publicly available pursuant to section 21, sections 40 and 41 shall apply correspondingly provided that the application results in registration. Remuneration and compensation for use prior to the notice of registration pursuant to section 18 shall nevertheless always be limited in accordance with section 40, third paragraph.

The statutory period of limitation for claims pursuant to this provision does not commence until the design has been registered.

Section 43. Grounds for judgment in favour of the defendant in civil cases

In civil cases concerning design infringement, judgment that the registration is invalid or that its transfer may be claimed pursuant to the provisions of chapter 5 may only be made if a final and unappealable judgment has already been passed declaring the registration invalid or ordering its transfer or if the Norwegian Industrial Property Office has made a final decision ordering cancellation or transfer.

Section 44. Penalties for design infringement

A person who wilfully uses a design in contravention of this Act or who is accessory thereto shall be liable to fines or imprisonment for up to three months.

Public prosecution will only be instituted if so requested by the aggrieved party.

Section 45. Penalties and compensation in the event of breaches of the duty to disclose information pursuant to section 22

A person who wilfully or negligently has breached the duty to disclose information pursuant to section 22 shall be liable to fines and shall compensate for any damage to the extent deemed reasonable.

Public prosecution will only be instituted if so requested by the aggrieved party.

Chapter 8. Provisions concerning legal proceedings

Section 46. Obligatory venue

The following legal actions must be brought before the Oslo District Court:

  1. Actions concerning the right to a design for which registration has been applied pursuant to this Act, cf. section 30.
  2. Actions concerning the review of a decision made by the Board of Appeals as referred to in section 39.
  3. Actions concerning invalidity or transfer of a registration, cf. sections 25 and 30.

The Oslo District Court is the venue for applicants and holders who are not resident in Norway.

Section 47. Notification of legal proceedings

A person who institutes legal proceedings concerning invalidity or transfer of a registration shall at the same time notify the Norwegian Industrial Property Office and by means of a registered letter give notification to any licensee entered in the Design Register and whose address is recorded therein. A licensee who institutes legal proceedings concerning design infringement shall in the same way notify the person entered in the Design Register as the design right holder if his address is recorded in the register.

If the plaintiff does not document that the necessary notifications have been given, the court may fix a time limit during which the notifications must be given. If the time limit is not observed, the case shall be dismissed.

Section 48. Forwarding of judgments

The court shall forward transcripts of judgments in civil disputes pursuant to this Act to the Norwegian Industrial Property Office.

Chapter 9. Miscellaneous provisions

Section 49. Address for correspondence

Notifications from the Norwegian Industrial Property Office to an applicant, design proprietor, or a party requiring an administrative review are always considered as submitted when sent to the address specified most recently to the Norwegian Industrial Property Office by the party concerned. The address shall be recorded in the Design Register. If the applicant or proprietor has a representative, notifications according to this paragraph may be sent to the representative.

If the recorded address proves to be incorrect, the notification or an extract thereof, shall be published in the Norwegian Design Journal (Norsk Designtidende) with an indication that the document may be obtained at the Norwegian Industrial Property Office.

May service of process or other procedural notifications not be submitted at the stated address, paragraph 2 applies correspondingly to the Court. In such case, the document shall be considered served or notification given four weeks after the publication in the Norwegian Design Journal (Norsk Designtidende).

If the applicant or the design proprietor otherwise has appointed a representative to act on his behalf in matters concerning the application or the design, the name and the address of the representative shall be recorded in the Design Register. This also applies if a party requesting an administrative review has appointed a representative to act on his behalf in matters concerning the request.

Section 50. Reinstatement of rights

A person who, in relation to the Norwegian Industrial Property Office, has failed to observe a time limit prescribed in or pursuant to the provisions laid down in chapter 2, 4 or 6 and, as a result of this, has suffered loss of rights, shall, when so requested, be granted reinstatement of rights if he can prove that he or his representative has taken the care that may reasonably be expected. The claim must be filed in writing with the Norwegian Industrial Property Office within two months after removal of the cause of the failure to observe the time limit and not later than four months after expiry of the time limit. Within the same time limit, the omitted act shall be carried out. A stipulated fee shall be paid.

The first paragraph shall not apply to time limits pursuant to section 16 concerning priority or the time limit for bringing legal proceedings pursuant to section 39, paragraph 2, 2. sentence. Nor shall reinstatement of rights be granted in cases of failure to observe the time limit laid down in section 37 for appeal against decisions referred to in section 36, second paragraph.

Section 51. The Design Register, etc.

The Norwegian Industrial Property Office keeps the Design Register and issues a publication where registrations, etc. are published.

Anyone has a right to inspect the Design Register and to receive a certified extract therefrom. A stipulated fee shall be paid for extracts.

A stipulated fee shall be paid for copies of documents available to the public pursuant to this Act.

The fees for non-certified printouts and copies shall be set to a level where the total income does not exceed the actual costs of communicating the information, with a reasonable profit added.

Section 52. Regulations pursuant to this Act (Fees, etc.)

The King may in regulations issue further provisions for supplementation and implementation of this Act. The King may, inter alia, issue provisions concerning

  1. the scope of the Norwegian Industrial Property Office’s examination of applications,
  2. international applications and registrations,
  3. length of time limits pursuant to the Act,
  4. division and merger of applications and registrations,
  5. keeping of and access to the Design Register, and
  6. fee rates and payment. The King may here prescribe fees for division and merger of applications and registrations.

Section 53. Licensing

A design right holder may grant another person a right to use the design (licence). The licensee may not further transfer the right unless his agreement with the holder so permits.

If the licence belongs to an undertaking, it may be transferred together with the undertaking unless otherwise agreed. A person who transfers the undertaking, shall remain liable for fulfilment of the agreement.

A licence shall be entered in the Design Register and be published if one of the parties so requests. The same applies if a registered licence has been transferred or has ceased to be valid.

Section 54. The legal effect, etc. of entries in the Design Register

Legal proceedings that apply to a design registration may always be instituted against the person registered as holder of the design right in the Design Register and notifications that the Norwegian Industrial Property Office shall give to the holder may always be sent to this person.

If a design right is transferred to another person, this shall be entered in the Design Register and be published if one of the parties so requests. If some of the designs in a co-registration pursuant to section 15 are transferred, the transfer may only be entered in the Design Register and be published if the holder requests that the registration be divided. A stipulated fee shall be paid for such division.

Liens attaching to the design right shall be entered in the Design Register and be published after notification by the execution and enforcement authorities (namsmyndighetene).

If a design registration is voluntarily transferred to two or more parties, the most recently transferred right shall, in cases of conflict, have priority over the earlier transferred right if it was the first to be notified for entry in the Design Register provided that the holder acted in good faith when notifying transfer of the right for entry in the register. The same applies in cases of conflict between licences.

Chapter 10. International design registration

Section 55. Definitions

By international design registration is meant registration of a design undertaken by the International Bureau of the World Intellectual Property Organization (WIPO) on the basis of the Geneva Act of the Hague Agreement of 6 November 1925 concerning the International Registration of Industrial Designs (Geneva, 2 July 1999).

The Norwegian Industrial Property Office is the registration authority in matters relating to the international registration of designs in Norway.

Section 56. Application for international design registration

A person who is a Norwegian national or domiciled or has a real and effective industrial or commercial establishment in Norway may apply for international registration of a design by filing an application for this with the Norwegian Industrial Property Office or the International Bureau.

The application shall fulfil the requirements laid down in the Geneva Act of the Hague Agreement.

When an application for international design registration is filed with the Norwegian Industrial Property Office, the Norwegian Industrial Property Office shall forward the application to the International Bureau within the time limit laid down in regulations. A stipulated fee shall be paid for such forwarding.

Section 57. Requirement that an international design registration shall have effect in Norway

When the Norwegian Industrial Property Office receives a notification from the International Bureau with a requirement from the holder that an international registration shall have effect in Norway, the Norwegian Industrial Property Office shall examine whether the registration applies to a design as referred to in section 2 (1) and whether the requirements laid down in section 7, first paragraph, are fulfiled. If the requirements are not fulfiled, the Norwegian Industrial Property Office shall wholly or partly refuse to give the international registration effect in Norway. Such refusal must be notified to the International Bureau within the time limit laid down in regulations.

In the event of refusal, the holder of the international registration may, on the requirements laid down in regulations, request the Norwegian Industrial Property Office to re-evaluate the question of whether the international registration shall have effect in Norway.

If the requirements are fulfiled, the Norwegian Industrial Property Office shall enter the international registration in the Design Register and publish that it has effect in Norway.

Sections 19 and 50 shall apply correspondingly to the Norwegian Industrial Property Office’s consideration of requests that an international registration shall have effect in Norway. If the international holder has claimed priority, section 16 shall apply.

Section 58. The effects of an international design registration

An entry in the Design Register indicating that an international registration has effect in Norway has the same effect as if the design was registered in Norway. The entry has effect from the assumed date of the registration at the International Bureau.

Until the international registration is entered in the Design Register and published pursuant to section 57, fourth paragraph, the registration has the same effect as an application for design registration in Norway. If anyone uses the design without the consent of the international holder and this use takes place after the international registration has been published by the International Bureau, sections 40 and 41 shall apply correspondingly if the registration is subsequently entered in the Design Register. Remuneration and compensation for use before the entry is published pursuant to section 57, fourth paragraph, shall nevertheless always be limited in accordance with section 40, third paragraph. The period of limitation for claims pursuant to this paragraph does not commence until the registration has been entered in the Design Register.

The entry may be renewed pursuant to the provisions of the Geneva Act of the Hague Agreement. When the Norwegian Industrial Property Office receives notification from the International Bureau of renewal of an international registration, this shall be entered in the Design Register and published.

An entry in the Design Register indicating that an international registration has effect in Norway may be cancelled, invalidated, transferred or removed pursuant to the provisions of chapter 5. Cancellation pursuant to section 33 must be carried out within the time limit laid down in regulations.

Section 59. The effect of expiry of an international design registration

If an international registration wholly or partly expires, it shall also cease to have effect in Norway to the same extent. This shall be entered in the Design Register and be published.

Chapter 11. Final provisions

Section 60. Repeal of the Designs Act of 29 May 1970 and terminological amendments to other Acts

The Designs Act of 29 May 1970 is repealed. The term “mønster” (design) shall be replaced by the term “design” when used both in isolation and in compounds in the following statutory provisions:

  1. Section 273 (5) of the Act of 13 August 1915 No. 6 relating to Legal Procedure in Civil Cases
  2. Section 2, first paragraph (e) of the Act of 15 December 1950 No. 4 relating to enemy property.
  3. Section 14, first paragraph (5) of the Act of 3 March 1961 No. 4 relating to
    trademarks.
  4. Section 10, first paragraph of the Act of 12 May 1961 No. 2 relating to copyright in literary, scientific and artistic works, etc.
  5. Section 3-4, second paragraph (b), and section 5-9, first sentence of the Mortgage Act of 8 February 1980 No. 2. In section 3-7 of the Act of 11 June 1993 No. 65 relating to competition in commercial activity, the term “mønster” (design) shall be replaced by “en registrert design” (a registered design).

Section 61. Other statutory amendments

    1. In the Act of 2 July 1910 No. 7 relating to the office for the protection of industrial property, section 5, first paragraph shall read as follows:
    2. A Second Instance Department decision shall be made by a committee consisting of three members unless the chairman or vice-chairman of the department has decided that the case shall be considered by a committee consisting of five members. A decision not to consider the appeal may be made by the chairman or the vice-chairman alone if this decision is found by him to be indisputable.
  1. In the Act of 3 March 1961 No. 4 relating to trademarks, the following amendments shall be made:

Section 19, third paragraph shall read as follows: If the applicant does not respond or rectify the irregularity before expiry of the time limit, the application shall be disallowed. Consideration of the application shall be resumed if the applicant responds or rectifies the irregularity within two months after expiry of the time limit. A stipulated fee shall be paid. Resumption may be granted only once during consideration of the application.

Section 22a, first paragraph, second sentence shall read as follows: A stipulated fee shall be paid.

Section 23a, second paragraph shall read as follows: A request for renewal shall be filed in writing with the Norwegian Industrial Property Office at the earliest one year before and at the latest six months after expiry of the registration period. A stipulated fee shall be paid. If the request for renewal is filed after the expiry of the registration period, an additional fee must also be paid.

Section 33, first paragraph shall read as follows: If so requested by the new the holder, the transfer of a registered trademark shall be recorded in the Trademark Register and notice thereof published. Sections 28 and 31 shall apply correspondingly.

Section 34, third paragraph, first sentence shall read as follows: Both the holder of the trademark and the licensee may request that a licence for a registered trademark be recorded in the Trademark Register and notice thereof published.

Section 47, second sentence and new third sentence shall read as follows: The
application shall otherwise satisfy the requirements laid down in regulations. A
stipulated fee shall be paid.

Section 50, third paragraph shall read as follows: The provisions laid down in sections 19 and 60 shall apply correspondingly.

Section 60, first paragraph, third sentence, and new fourth sentence shall read as follows: Within the same time limit, the neglected act shall be carried out. A stipulated fee shall be paid.

Section 61 shall read as follows: Anyone has a right to inspect the Trademark Register and to obtain a certified extract therefrom or copies of trademark applications with enclosures which are publicly available pursuant to section 17a. For such transcripts and copies, a stipulated fee shall be paid.

3. In the Act of 15 December 1967 No. 9 relating to patents, the following amendments shall be made:

Section 15, third paragraph shall read as follows: Consideration of the application shall nevertheless be resumed if the applicant submits comments or takes steps to correct the irregularity within four months after expiry of the said time limit. A stipulated fee shall be paid.

Section 27, first paragraph, second sentence shall read as follows: A stipulated fee shall be paid.

Section 31, first paragraph, second sentence shall read as follows: The applicant shall pay a stipulated fee to the Norwegian Industrial Property Office.

Section 72, first paragraph, third sentence and new fourth sentence shall read as follows: Within the same time limit, the neglected act shall be carried out. A stipulated fee shall be paid.

4. Section 2 of the Act of 17 April 1970 No. 21 relating to the right to employees’ inventions shall read as follows: With such limitations as follow from the provisions of section 7, first paragraph, section 9 and section 10, the Act shall only be applicable when not otherwise agreed or assumed to be agreed.

Section 62. Commencement and transitional provisions

The Act shall apply from the date decided by the King. The King may bring into force the various provisions on different dates.

The Designs Act shall also apply to designs which were registered or for which registration was applied before the Act entered into force with such exceptions as follow from this section.

In the case of applications filed before the Act entered into force, the previous provisions concerning applications, processing, right of inspection, appeals and review of appeal decisions by a court shall apply.

The provisions of sections 4 and 8 do not apply to designs which were registered or for which registration was applied before the Act entered into force. Review by the Norwegian Industrial Property Office or the courts of a registration made on the basis of the previous provisions shall take place on the basis of these provisions.

If anyone, before the Act entered into force, used a design in a manner that did not require the consent of the holder pursuant to the previous provisions but which requires such consent pursuant to this Act, the person concerned may continue this use notwithstanding the new provisions. The same right may be invoked by persons who have made substantial preparations to use a design.

 

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