The Supreme Court of the Benelux (the Benelux Gerechtshof) has handed down an interpretation of the term "valid reasons" in Article 5.2(a) of the BMW on two occasions. The Court ruled that any risk that would normally be run in the operation of an enterprise cannot constitute a valid reason for non-use (Winston decision 27 January 1981, NJ 1981, 333; Kim decision, 18 November 1988, NJ 1988, 299).

Well-known marks are protected under Article 4.5 of the UBTL. A mark that could be confused with a well-known mark, within the meaning of Article 6bis of the Paris Convention, can be declared invalid. The same protection applies even if the marks relate to dissimilar products or services. This protection covers both marks for products and marks for services (Article 39 of the UBTL).

The UBTL states that the proprietor of a well known mark can only get a court ruling forcing a third party to stop its use of this well known mark if this mark has been registered in the Benelux countries (Article 12.A.1). In the event that the proprietor of an unregistered well-known mark starts legal proceedings against a third party's use of this mark, the proprietor of the well known mark always has the option of registering his mark during the proceedings, on the basis of Article 12.A.3, and thus fulfilling this specific requirement of the above mentioned Article 12.A.1.

Article 13.A.1(a) of the UBTL affords the rightful claimant the right to prevent third parties from using the mark in the course of trade for the products or services for which the mark has been registered. Under these circumstances, the likelihood of confusion is not a requirement for protection. Article 13.A.1(b) provides that the rightful claimant can take action against any use of the mark or a similar sign in the course of trade for products or services for which the mark has been registered, or for similar products or services, when there is likelihood of an association by the public between the mark and the sign.

If a mark has been registered in bad faith (Article 4.6 of the UBTL), the registration can be declared invalid if a case is brought to court within five years of the date on which the mark is filed for registration.

Article 14.B.2 in conjunction with Articles 4.5 and 4.6 of the UBTL states that a registration for a mark that causes confusion with a well-known mark (Article 4.5), or for a mark that has been registered in bad faith (Article 4.6), can be declared invalid if a case is brought to court within five years of the date of deposit. The Supreme Court of the Benelux, however, ruled in the Adidas case (BenGH 23 December 1985) that the time limit of five years in Article 14.B.2 does not apply when a mark is registered in bad faith and the infringed mark is a well-known mark as mentioned in Article 6bis of the Paris Convention. This means that, in these cases, no time limit applies for invoking invalidation of a mark registered in bad faith.

Geographical indications are protected under the general prohibition of unlawful acts (Article 6:162 of the Civil Code). Registered geographical indications are protected under EC Regulation 2081/92 of 14 July 1992 of the European Council and Regulations 1107/96 of 12 June 1996 and 1263/96 of 1 July 1996 of the European Commission.

(a)The uniform law governing the protection of designs in the Benelux (UBDL) and the Dutch Copyright Act (AW) provide for protection of designs in the Netherlands. (b)Requirements for the protection of designs are set out in Article 1 of the UBDL. These requirements are that the product must be new and that the object of protection is a utensil. The rights to the design are granted when a design is first filed (Article 3 of the UBDL). Designs are tested by the Benelux Design Office only for violations of public order or decency, and there is no objections procedure (Article 9 of the UBDL). Designs can be filed either at the national services of the Benelux countries or at the Benelux Design Office in The Hague, Netherlands. The file must contain a photographic or graphical illustration of the object and must be accompanied by payment of the prescribed taxes (Article 8 of the UBDL). Under the AW, the designer (Article 10 AW) is granted copyright as soon as the design is completed, providing it has its own original character and a personal mark of the maker. There is no registration procedure. Ultimately, the courts will decide whether a design fulfils the requirements for protection of design rights or copyright. (c)Once a design has been filed with the Benelux Design Office, the depositor is granted an exclusive right to prevent others from producing, importing, exporting, selling, offering for sale, renting, offering for rent, exhibiting, delivering, using or keeping in stock for industrial or commercial purposes a design with the same or similar appearance (Article 14.1 UBDL). The maximum period of protection provided by the UBDL is 15 years from the filing date (Article 12 of the UBDL). Copyright gives the rightful claimant the exclusive right to prevent others from copying the design or making it public (Article 1 of the AW). The term of protection ends 70 years after the death of the maker (Article 37 of the AW). (d)The holder of a right based on the UBDL can bring an infringement case before a court and sue for declaratory judgement, compensation for damages, an order to refrain from certain activities or to take certain actions, such as withdrawal of the products that infringe the rights and the provision of information on suppliers. If the court finds that the infringement was intentional, the holder of the rights can sue for destruction of the products in breach of those rights and of the production machinery, claim property rights to the goods in question and claim any earnings from the activities in breach of the rights. No conditions other than those mentioned in Article 14.1 of the UBDL are required. The holder of a copyright can also bring an infringement case to court without any further conditions. He can sue for declaratory judgement, compensation for damages, an order to refrain from certain activities or to take certain actions, such as withdrawal of the products in breach of the copyright and the provision of information on suppliers, as well as destruction of the products or property rights to the goods in question. (e)The appearance of objects which are necessary to obtain a technical effect is excluded from protection under the UBDL. The Court of Justice of the European Communities has ruled that design rights based on the UBDL will expire not only in the Benelux countries, but throughout the European Economic Area (EEA) once the subject of protection has been introduced to the market in the EEA, either by the rightful claimant or by a third party with the consent of the rightful claimant. There are no specific exceptions to the protection provided by the AW.

Textile designs can be protected under both the UBDL and the AW. Neither Act provides for specific exceptions for textile designs.

Yes. Norway does recognize a right of priority on the basis of an earlier trademark application filed in any other WTO Member by a national of a WTO Member. This follows from the Trademarks Act, Section 30 and more specifically from Section 5 of the Trademarks Regulations.

In theory, the list of signs under Section 1 of the Norwegian Trademarks Act includes colour marks. However, a trademark may, according to Section 13, not be registered unless it is capable of distinguishing the goods of the holder from those of others. A colour mark may therefore only be registered as a trademark if it is considered to be well known within the circle of trade concerned in Norway as a distinctive sign for someone's goods or services, i.e. if the mark more specifically has acquired a "secondary meaning" in which the public identifies the colour with the product. There is at present no single colour mark registered as a trademark in Norway.

It follows from Sections 4 and 6 of the Trademarks Act that a likelihood of confusion shall be presumed if an identical sign is used for identical goods or services. Section 4 states that the right to a sign in accordance with Sections 1 to 3 has the effect that, in the course of trade, nobody except the holder may use the same sign for his or her goods or services (cf. the third paragraph of Section 1). An identical sign is always considered as the "same sign" within the meaning of this provision, and it follows from Section 6 that the provision always applies to identical goods or services. In other words, the holder does not have to prove likelihood of confusion in each particular case where an identical sign is used for identical goods or services – the Trademarks Act presumes that such likelihood of confusion exists in these cases.

Article 20 of the TRIPS Agreement provides that the use of a trademark shall not be unjustifiably encumbered by special requirements such as use in a special form. Section 10 of the Norwegian Trademarks Act prescribes that a court of law may order that the use of a trademark be encumbered by special requirements such as use in a special form, but only in cases where this is necessary to prevent any likelihood of confusion as referred to in Sections 3, 8 and 9 of the Trademarks Act, and where it is found reasonable. Norway believes that the word "unjustifiably" was included in Article 20 of the TRIPS Agreement precisely so that the TRIPS Agreement would not preclude provisions in national law such as Section 10 of the Norwegian Trademarks Act.

The travaux preparatoires (Ot.prp.nr. 72 (1991 92) p. 81) give a few examples of circumstances or situations that would constitute "proper reasons" for continued registration despite non use of a trademark: prohibitions against importation, acts of war, a public authority's dilatoriness in issuing a required approval of a product, or a stop in production caused by a fire in the holder's factory. Section 25a entered into force on 1 January 1993. No administrative or judicial decisions addressing this issue have been given yet, and none can be expected before 1998 at the earliest.

The nature of goods or services to which a trademark is to be applied may not serve as an obstacle to the registration of the mark under Norwegian law.

Unregistered well known trademarks are in Norway protected in much the same way as registered well known trademarks. Section 2 of the Trademarks Act prescribes how exclusive rights to a non registered trademark are acquired: "The exclusive right to a trademark may also be acquired without registration when the trademark is established by use. A trademark is considered to be established when it is well known within the circle of trade concerned in this country as a distinctive sign for someone's goods." It follows from Section 4 that the exclusive right thus conferred upon the holder has the effect that nobody but the holder may use the same sign in the course of trade. The term "same sign" is defined in Section 4 as a sign which is so similar to another sign, that it is likely to be confused with that other sign in the course of trade. The first paragraph of Section 6 provides the general rule that signs only shall be likely to be confused if they relate to identical or similar goods. The second paragraph of Section 6 provides an exception to this rule: "Signs that are similar shall however be considered likely to be confused even if they do not relate to identical or similar goods, if the sign with the earlier right is so well known and established in this country, that it would imply an unreasonable exploitation or be detrimental to its goodwill if the other sign were to be used by someone else." If someone has exclusive rights to an unregistered trademark in accordance with these rules, then the registration of the same sign by someone else shall be refused (Sections 19 and 21a). A trademark which has been registered contrary to the provisions of the Trademarks Act may be declared invalid by a court decision (Section 25). There is no time limit for requesting the cancellation or the prohibition of the use of trademarks registered or used in bad faith (cf. Article 6bis(3) of the Paris Convention (1967)). Section 8 of the Norwegian Trademarks Act gives a particular rule for cases where the application for registration was made in good faith (cf. Article 6bis(2) of the Paris Convention): "Even where a registered trademark is likely to be confused with a sign which has an earlier right, it shall be allowed to exist validly side by side with the latter, provided that the application for registration was filed in good faith and the holder of the earlier right has knowingly tolerated the use of the later trademark for five consecutive years from the date of registration." Please note that the provisions of the Trademarks Act concerning goods as a general rule also apply to services (cf. the third paragraph of Section 1 of the Trademarks Act; cf. Article 16.2 of the TRIPS Agreement).

Section 2 of the Trademarks Act does not specifically require that the well-known mark be used in Norway in order for it to be protected under the Trademarks Act. In theory, therefore, it is possible that an unregistered well-known mark may be accorded protection solely on the basis of knowledge of the mark as a result of promotion and advertising. It could also in this context be pointed out, simply for the sake of clarity, that Section 25a of the Trademarks Act concerning the requirement that a mark be used within five years from registration only applies to registered trademarks.

The Trademarks Act, Section 32, explicitly permits the assignment of a registered trademark without the transfer of the underlying business.

Both the Trademarks Act and the Marketing Control Act have provisions that protect geographical indications. Section 14, No. 2, of the Trademarks Act provides that a trademark shall not be registered if "it is likely to deceive the public". Section 36 prohibits the use of deceptive signs: "If a sign is put to use by a new holder or by any other person with the consent of the holder, and the use of the sign by the new holder is likely to be deceptive, a court of law may prohibit him from using the sign in an unaltered form, and otherwise order such injunctions as the court finds necessary. The same also applies in other cases where a sign is deceptive or is used in a way which is likely to be deceptive. A legal action according to this Section may be brought by the Patent Office or by anyone who has a legal interest in it." Section 1 of the Marketing Control Act proscribes acts which run counter to "good business practice". The use of false or otherwise misleading geographical indications is generally considered to be contrary to good business practice and is therefore prohibited. Such use is also prohibited by the first two sub-sections of Section 2 of the Marketing Control Act, which read as follows: "It is prohibited in the conduct of business to apply an incorrect or otherwise misleading representation which is likely to influence the demand for or supply of goods, services or other performances. The same applies to any other procedure which may have such influence on the demand or supply, if as a result of its form or other circumstances it is likely to mislead consumers." Please note that the Norwegian Government formally has proposed to add a new provision to both the Trademarks Act and the Marketing Control Act, in order to better ensure full compliance of these acts with the requirements of Article 23 of the TRIPS Agreement. The proposal is currently being considered by the Norwegian Parliament (Stortinget).

(a)The Norwegian Designs Act of 29 May 1970, No. 33, establishes a sui generis system for the protection of industrial designs. (b)Chapter 1 of the Designs Act prescribes the conditions that must be satisfied in order for a design to be registered. Section 2 provides that a design, as a general rule, only may be registered if it differs essentially from what was known prior to the filing date of the application for registration. Two exceptions to this general rule are made in Section 3: a design may be registered even if it has become available to the public within the last six months prior to the filing of the application, if this has occurred (i) in consequence of an evident abuse in relation to the applicant or anyone from whom the applicant's right is derived, or (ii) because the applicant or anyone from whom the applicant's right is derived has displayed the design at an official or officially recognized exhibition. Section 4 stipulates that a design may not be registered if "the design or its exploitation would be contrary to decency or public order", or if the design without authorization contains: -a public coat of arms, flags, or other public emblems or signs; -anything that is likely to be interpreted as the firm name or trademark of someone else, or that is likely to be interpreted as the name or portrait of another person and does not obviously refer to somebody deceased long ago; -anything that is likely to be interpreted as the distinctive title of a protected literary or artistic work of someone else, or that infringes the authorship (copyright) of someone else to such work, or the right of someone else to photographs; or -anything that does not essentially differ from designs registered in Norway for someone else. The registration procedure will shortly be amended. The new procedure, which is expected to enter into force on 1 January 1997, is briefly as follows: -An application for a registration of a design must be made in writing to the Patent Office and must be accompanied by the prescribed fees (Section 10). -The Patent Office examines whether the conditions for registration of the design are fulfilled. If the applicant has not complied with the prescribed requirements, or if the Patent Office has other objections to the registration, the applicant shall be notified thereof in an official letter and be requested to express his or her views or make amendments within a specified time limit. If, after the receipt of the applicant's reply, the Patent Office still finds an objection to the acceptance of the application, and if the applicant has had occasion to comment on the objection, the application shall be rejected, unless the Patent Office finds reasons for sending the applicant another official letter. -If an application is in the prescribed form and no objection to the registration is found to exist, then the design is registered and the registration is published (Section 18). The public then has four months to enter oppositions (Section 20). If an opposition is entered, then the Patent Office may cancel the registration if it finds that the registration should not have been made, or reject the opposition if it finds nothing wrong with the registration (Section 21). The decision of the Patent Office may be appealed to the Board of Appeals (Section 22). The decision of the Board of Appeals may be brought before a court of law (Section 23). (c)The first paragraph of Section 5 of the Designs Act reads as follows: "The design right implies, with the exceptions established in this Act, that nobody except the holder of the design right (the holder of the design) may without authorization exploit the design commercially by manufacturing, importing, offering for sale, transferring or leasing goods, the appearance of which does not differ essentially from the design, or goods incorporating anything that does not differ essentially from the design." The design registration is in force for up to five years from the day on which the application for registration was filed, and may upon request be renewed for two further periods of five years each (Section 24). Each such period of five years runs from the expiration of the preceding period. (d)The remedies available to the holder of a design are given in Chapter 7 of the Designs Act. The holder may request criminal proceedings in respect of violations of the Designs Act (see Section 35). Fines or imprisonment for up to three years is the punishment for anyone who is found guilty of infringement of another person's right under the Designs Act. Furthermore, damages may be claimed pursuant to Section 36, while Section 37 provides rules governing, inter alia, confiscation, destruction or amendment of goods constituting an infringement of a design. (e)Section 7 of the Designs Act provides an exception to the protection accorded by the right to a design. The provision stipulates that importation of spare parts and accessories to be used for the repair of aircraft may be excluded from the right to a design. This provision is necessary in order for Norway to comply with the requirements of Article 27 of the Convention on International Civil Aviation, done at Chicago on 7 December 1944, to which Norway is a party.