Annual Technical Report 2003 on Trademark Information Activities submitted by Norway (SCIT/ATR/TM/2003/NO)
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I. Evolution of registration activities
The national trademark applications are normally filed in standardized paper form. Application forms in pdf-format (key in of data, print out and storage of forms is possible) are, since 2001, available from the web site of the Norwegian Patent Office (hereafter referred to as the “NPO”) at: www.patentstyret.no. If filed by telefax, the original document must promptly be submitted by regular mail.
Filing of applications and communications using e-mail is allowed, but not recommended, due to possible security and data format problems.
Use of a standard form (paper or electronic) is not an absolute requirement for being accorded a filing date for any type of application, or, in order to meet a time limit. Neither is there a requirement to use a standard form for the filing of any other kind of communication.
The notifications referring to designations under international registrations according to the Madrid system, are downloaded electronically as SGML files by ISDN-connection and imported into our database. We also receive and process paper copies of all notifications, including designations.
All national applications and designations under international registrations, including all (most of the) bibliographical data, and subsequent notifications and communications, are kept record of in our database, which also is the official national register for registered trademarks and international marks protected (granted protection) in Norway.
Some statistical data:
Number of national applications filed in 2002: 5 757
Number of national applications filed in 2003: 5 587
Number of designations of Norway under the Madrid system in 2002: 6 945
Number of designations of Norway under the Madrid system in 2003: 6 666
Total number of applications/designations in 2002: 12 702 Total number of applications/designations in 2003: 12 253
A decrease of 3.5 % from 2002.
Total number of trademark cases (national applications and Madrid designations) having ended with a final decision in 2002: 14 823
Total number of trademark cases (national applications and Madrid designations) having ended with a final decision in 2003: 13 603
II. Matters concerning the generation, reproduction, and distribution of secondary sources of trademark information, i.e., trademark gazettes
All bibliographical data for trademarks have been stored in our database, VARBAS, for several years. The information contained therein is the basis for the generation of the Norwegian Trademark Gazette (“Norsk Varemerketidende”)]. The Gazette is produced by Microsoft Word macros and built in SQL questions. The wordfiles are then imported into Adobe Page Maker where the final layout is handled. Then the PDF-file version of the gazette is published on the web site of the NPO. All marks filed and registered in colors are published in colors. Date of publishing is the date of making the gazette available for the public on our web site where it is available free of charge.
The Gazette is published weekly. From January 1, 2002, the Trademark Gazette is available in electronic format only (pdf-format), from the NPO’s web site www.patentstyret.no . We have no longer a subscription service, and we do not send paper copies of the gazette to patent offices or libraries or others.
III. Matters concerning classifying, reclassifying and indexing of trademark information
Norway uses the International Nice Classification as its classification system for goods and services. Even the oldest registrations are classified according to this system based on reclassification by the Norwegian Patent Office. In the register you will find marks with lists of goods / services classified in accordance with all prior versions of the Nice Classification.
In the computerized search procedures for conflicting marks, the search is limited primarily to the same class numbers and class numbers of classes predefined as “conflict classes”, not the specified goods and services within each class.
However, in the subsequent manual examination of applications (designations), the complete list of goods and services is examined. This is imperative when older registrations or older still pending applications cover specified goods and/or services and not only the whole classes. Up until April 1 , 1996, it was allowed to apply for and register any trademark or collective mark for any Nice class with the general and “exhaustive” wording “all the goods” or “all the services”.
The complete Nice Classification list is translated into Norwegian and published by the Norwegian Patent Office on the Internet. A list according to the eighth edition of the Nice agreement was published in January 2002.
The Office has stored all the versions of the Nice Classification and all the pre-defined terms in our database which can be used when checking the proper classification. This function, however, is not yet subject to automation.
There is no obligation to use pre-defined terms in the classification. However, some terms may not be accepted if they are too vague/or if they are ambiguous.
The goods specified by the applicant to be in a certain class, will set the frames of the scope of protection. If the applicant applies a trademark for shoes in class 9, he will only receive protection for the shoes to be found in class 9, and not for shoes in other classes, such as 10 and 25.
A new development of functionality in our new national trademark database will make it possible to indicate for any mark which version of the Nice Classification the mark is classified in accordance with.
Norway is not a member of the Vienna Agreement for Classification of the Figurative Elements of Marks, but is using the system with some national adaptations and modifications. Paper copies of any figurative mark, or any mark with figurative elements are kept in a manually operated file system. A copy of the mark is stored under all classes and/or subclasses in which the mark has been classified. To all copies of the mark there is attached a full set of bibliographical data. Applied marks are sorted in application number order and registered marks in registration number order. The file comprises all pending national applications and international registrations not yet granted and all valid national registrations and international registrations granted protection in Norway.
No additional written, descriptive information is added to the classification information.
In addition, stylized word marks - words given a special graphic design - must go through the normal searching and examination process described below.
The Vienna Classification of international registrations performed by the International Bureau (WIPO) is considered as a guideline, but may be altered by the NPO, as our classification practice and policy may not be quite in line with the WIPO classification practice and policy.
IV. Trademark manual search file establishment and upkeep
The NPO keeps a file which is the manual search file for figurative marks (see III above), systematized according to the Vienna Classification. This file consists of pending and registered trademarks. This file is updated continuously.
There are no manual files concerning regular word marks.
The Norwegian Patent Office also keeps an internal and non-official register for precedent cases – namely for refusal decisions, decision in opposition cases and Board of Appeal decisions.
V. Activities in the field of computerized trademark search systems
The already mentioned electronic trademark register, which also includes the official document/correspondence journal, is kept on a server in a local network of PCs, and allows simple searches for identical or similar marks. Marks with figurative element, or word marks in non-standard characters or fancy layout, are all scanned, and kept in the electronic trademark register as images in tif or jpeg-format (older marks are all stored in tif-format). They are viewable on screen, but at present the search for figurative identity or similarity is still performed manually. Within the first quarter of 2004 we plan to have also these searches fully supported by computerized tools.
The searches for conflicting prior marks are outsourced to the private company Compu-Mark Nordic. Once a week a complete and updated electronic copy of all the bibliographical data in the Norwegian trademark register, including all new and not yet examined applications and designations, is forwarded by an ISDN connection to an access server located at Compu-Mark Nordic. They do a search for similarities between the mark applied for, and earlier applications and registrations - based on visual and/or phonetic identity or similarity. The results of the performed searches are contained in listings and are forwarded by e-mail to the Norwegian Patent Office. We load the results into our database, and the reports are made available for the substantive examination of the new mark application/designations until the new SANT system (see item 9) is up and running.
During 2004 the NPO will use Acsepto from SWORD. In-house verbal and visual searches, in combination with search for figurative elements according to prior classification according to the Vienna system, will be carried out.
VI. Administration of trademark services available to the public (relating to facilities, e.g., for lodging applications, registering trademarks, assisting clients with search procedures, obtaining official publications and registry extracts)
The Norwegian Patent Office is situated in Oslo. The Office is open to the public, and is used for information and search purposes. The Info Centre and the library can answer questions and give general information concerning industrial property rights to the public. They also provide information free of charge from the official trademark register (paper files and electronic database) both by telephone and visits Monday to Friday, during the hours 0900 to 1500. The search files and applications are available to the public and they may also obtain register transcripts from the official registers or copies of defined registrations for a fee.
The NPO also has a Search and Examination Service, which provides searches for a fee.
VII. Matters concerning mutual exchange of trademark documentation and information
No paper copies of the Norwegian Trademark Gazette (”Norsk Varemerketidende") are distributed to patent offices in other countries. The Norwegian Patent Office receives paper copies of the official trademark gazettes from some other countries. During 1999, the NPO began to electronically download Madrid notifications from WIPO, by an ISDN connection. The downloaded SGML files are interpreted and electronically transferred into our trademark database. This has improved the quality of the data received, and made the process more efficient.
In 2004, the NPO will start downloading of notifications of new designations, subsequent designations, partial assignments and mergers electronically from WIPO in the XML format.
Later, after implementing new (and currently ongoing) developments to the new case handling system, other notifications received from WIPO will also be downloaded and handled / processed electronically using the XML standard.
Provisional refusals and other communications from the NPO to the International Bureau (WIPO) will step by step be phased over from paper to XML files with style sheets for easy print out of paper copies with desired layout.
Paper copies of Madrid designations are still received from the International Bureau.
The Office does not forward any machine-readable information.
VIII. Matters concerning education and training including technical assistance to developing countries
The Norwegian Patent Office has exhibits at fairs for industry, trade and oil/gas in order to promote protection of intellectual property, the use of trademark information and other industrial property rights. The NPO carried out 30 courses and seminars, covering all aspects of intellectual property rights.
For the third year in a row, the NPO arranged a training programme on industrial property rights for representatives from developing countries. In 2003, 20 participants attended a 7-day course, where trademark was the main theme. These courses are carried out in association with WIPO (World Intellectual Property Organization).
In 2003, the NPO initiated a campaign to attract the attention of the media to the significance of industrial property rights. In the second quarter of 2003, we started to measure the effect of these efforts, and found that we have had 29 interviews/articles in a variety of media. Our web site now includes pressroom, an email newsletter and FAQ.
IX. Other relevant matters
In 1998 the Norwegian Patent Office launched the SANT programme (Case handling with the use of New Technology), a comprehensive IT project aimed at establishing a complete system for electronic case handling (workflow based) and electronic document management (Documentum®).
Information on industrial rights will be electronically accessible to the public.
The project aims to make the case handling, the document handling, handling of case officer portfolios and the access of the public more efficient, and to simplify the exchange of information with other patent authorities and/or international IP organizations, such as WIPO.
The main vendor of the new case handling system is the French company SWORD S.A.
The Takisai® - Project
The NPO’s Takisai® project is a project for secure communication between the NPO and others. The project is based on “Public Key Infrastructure (PKI)”.
Public Key Infrastructure ensures that 1) availability, 2) authentication, 3) confidentiality, 4) non-repudiation, 5) traceability, 6) authorization and 7) integrity of a communication/document is maintained. Based on the PKI we will therefore have a fully secure communication channel between a party and the NPO.
The Takisai project will be an integrated part of the SANT system.