Protection for geographical indications in Norway is provided under both unfair competition law and through a formal procedure of registration. The recognition of a geographical indication does not necessarily require registration, but the use of a registration system may strengthen the protection conferred. Geographical indications are protected, as required by Article 22.2 and 22.3 of the TRIPS Agreement, through the Marketing Control Act (2009) and the Trademarks Act (2010).
Under the Marketing Control Act, consumers are protected against unfair and misleading commercial practices and misleading act in Sections 6 and 7. The provisions read as follows:
"Section 6. Unfair commercial practices
Unfair commercial practices shall be prohibited.
A commercial practice shall be unfair if it conflicts with good business practice towards consumers and is likely materially to distort the economic behaviour of consumers, causing them to make decisions they would not otherwise have made.
A commercial practice shall always be unfair if it is misleading pursuant to section 7 or section 8, or aggressive pursuant to section 9.
"Section 7. Misleading acts
A commercial practice shall be considered misleading if it contains false information and is therefore untruthful, or if it is otherwise likely to deceive consumers in relation to one or more of the following elements:
- a) the existence or nature of the product,
- b) the main characteristics of the product, such as its availability, benefits or risks, the product's execution, quantity, composition, specifications, accessories, origin, method and date of manufacture or provision of the product, delivery, usage or fitness for purpose, results to be expected from its use, tests or checks carried out on the product, or after-sale service and complaint-handling,
The practice shall nevertheless only be regarded as misleading if it is likely to cause consumers to make an economic decision that they would not otherwise have made.
Any marketing of a product, including comparative advertising, which creates confusion with the product or trade mark, trade name or other distinguishing mark of a competitor, shall also be considered misleading."
The interests of traders are protected in Sections 25 and 26 of the Marketing Act, which reads as follows:
"Section 25. Good business practice
No act shall be performed in the course of trade which conflicts with good business practice among traders.
Section 26. Misleading business methods
It shall be prohibited in the course of trade to use an incorrect or otherwise misleading representation which is likely to influence the demand for or supply of goods, services or other products. In this chapter, «representation» shall mean any form of announcement or statement made orally, in writing or otherwise, thus including descriptions, pictures, demonstrations, the form, size or type of packaging, etc.
Under the trademark registration procedure, Geographical Indications dealt with in Section 14 of the Trademarks Act. The provision reads as follows:
"Section 14. General conditions of registration
A trademark to be registered shall consist of a sign which is capable of being protected pursuant to Section 2 and capable of being represented graphically. It shall have distinctive character as a sign for the relevant goods or services.
A trademark cannot be registered if it exclusively, or only with insignificant changes or additions, consists of signs or indications that:
indicate the kind, quality, quantity, intended purpose, value or geographical origin of the goods or services, the time of production of the goods or of the rendering of the services or other characteristics of the goods or services, or
constitute customary designations for the goods or services according to normal linguistic usage or to loyal, established business practice.
The conditions in paragraphs one and two shall be met on both the date of application and the date of registration. When assessing a proposed trademark pursuant to paragraph one, sentence two, and paragraph two, it is necessary to take into consideration all circumstances that prevailed on the date of application, in particular effects of use of the trademark prior to this time.
A mark that is used in an industrial or commercial undertaking to designate the geographical origin of a product or service may, notwithstanding the second paragraph letter a), be registered as a collective mark."
A provision on prohibition of registration of misleading trademarks is found in:
"Section 15. Trademarks that conflict with public interests
A trademark cannot be registered if it:
- is liable to deceive, for example in respect of the nature, quality or geographical origin of the goods or services,"
The deceiving use of a geographical indication in a trademark may be prohibited in accordance with the Trademarks Act section 10:
"Section 10. Deceiving trademarks, etc.
If a trademark is of such nature as to deceive or is used by the trademark proprietor or by any other person with the consent of the trademark proprietor in a manner capable to deceive, a court may prohibit the use of the trademark or such forms of use that are considered deceiving and may issue other injunctions that are considered necessary.
Legal actions pursuant to paragraph one may be brought by the Norwegian Industrial Property Office and by anyone who has a legal interest in doing so."
The special protection required for wines and spirits under Article 23.1 and 23.2 of the TRIPS Agreement is set out in Section 31 of the Marketing Control Act and Section 15 paragraph 2 of the Trademarks Act. The provisions read:
MARKETING CONTROL ACT
"Section 31. Application of incorrect geographical indications to wines and spirits
It shall be prohibited in the course of trade to apply a geographical indication to a wine or spirit which does not originate from the geographical location designated by the indication. This shall apply even if the actual place of origin is also stated, or if the geographical indication has been translated or is followed by an expression like «kind», «type», «imitation», or something similar."
"Section 15. Trademarks that conflict with public interests
For wine and spirits, it is not permissible to register a trademark that consists of or contains anything that is liable to be understood as a geographical indication of origin, unless the geographical origin of the goods is in accordance with the indication."
Norway has adopted a sui generis regime for protection of geographical indications, designations of origin, and traditional specialties for agricultural products and foodstuffs, which provides protection above TRIPS-level for geographical indications fulfilling the set criteria. The legal basis for this system is found in Section 30 of the Food Production and Safety Act (2003).
Regulation No. 698 of 5 July 2002 (as amended) establishes the criteria and procedures for the certification of GIs, designations of origin, (and traditional specialties for foodstuffs) (other than waters, wine, and spirits). Decisions to grant such protection are made by the Norwegian Food Safety Authority (Mattilsynet). The applicant, who may be a group of primary producers and/or processors or a legal person (i.e. not a group), then becomes the holder of the registered indication or designation. The scheme has been administered by the Norwegian Food Branding Foundation (Matmerk) since 2007. Although there are time variations, on average an application is processed within 18 months.
Norway does not participate in the EU registration systems for agricultural products and foodstuffs, as agriculture falls outside the scope of the EEA Agreement. Registration is thus required both in the EU system as well as in the national system of Norway to enjoy protection against misuse, imitations, etc. in both markets. Two Norwegian specialties ("Fenalår from Norway" and "Stockfish from Lofoten") have been certified as GIs in the European Union and are thus provided the same protection there as registered products from EU Member States.
The EU systems for the protection of GIs for wines, spirits and aromatized drinks have, on the other hand, been incorporated into the EEA Agreement, and these GIs thus enjoy the same protection in Norway as of the registration in the EU. Norway has two such GIs – Norsk Akevitt (Norwegian Aquavit) and Norsk Vodka (Norwegian Vodka").
Section 18 of the Regulation contains provisions to be used in case of a conflict between a GI and a younger trademark, ref. also Section 16 e of the Trademarks Act. An application for a trademark which conflicts with a GI already protected under a product regulation, will be refused. The same applies for GIs for wines and spirits protected under the EU registration systems providing protection in Norway.
If use of a trademark would conflict with the right to an older GI, that would be dealt with by way of an infringement lawsuit or lawsuit based on unfair competition law, initiated by the GI holder before the courts.
In the case of an earlier trademark, Section 19 of the Regulation applies. A GI/designation of origin may not be registered if because of the reputation or use of a trademark or a collective mark is likely to mislead the consumer as to the actual origin of the product. Further, a GI/designation of origin may not be registered, if a trademark or collective mark already is registered if the trademark/collective mark
- is identical to the GI/designation of origin and
- is protected for the same or similar foodstuffs and
- may mislead the consumers as to the real origin of the foodstuff and
- is registered or applied for before the date of the reception of an application for protection of a GI/designation of origin in accordance to the RegulationAny rightful user of a GI/designation of origin under the Regulation has the right to enforce a GI/designation of origin. A group may on behalf of the rightful users of a GI/designation of origin it represents enforce the protected designation and claim reimbursement for any damage caused to the rightful users, cf. Section 27(a) of the Regulation.
- Further, if use of a GI would infringe rights to an older trademark, that would be assessed according to the general trademark law on risk of confusion etc. under Section 4 of the Trademarks Act, and would, upon a lawsuit, be dealt with by the courts.