A COUNTERFEITING BLACK SPOT? JURISDICTION REPORT: NORWAY
Lill Anita Grimstad Bryn Aarflot
Te Norwegian legislation differs from that of the EU with regard to customs surveillance. It is currently less risky to import large quantities of counterfeit goods into Norway than into most EU member states. Statistics from the Norwegian Customs Authority show that the volume of counterfeit products imported into Norway has increased rapidly, and there are indications that this figure will continue to grow.
Norway has in many ways become a gateway to the EU for counterfeit products, since border controls in relation to fake goods, in particular between Norway and Sweden, have traditionally not been very strict. It is essential for brand holders to know how the Norwegian system works so that they can identify the best way to prevent counterfeit goods from entering Norway.
Customs surveillance
Te most important instrument available to prevent illegal goods from being imported into Norway is the preliminary injunction, which may be issued by the court of first instance in the form of a judicial decision on customs surveillance. On the basis of this injunction, Norwegian Customs can stop counterfeit goods being imported into Norway. Te preliminary injunction can cover several trademarks and is normally issued for a one- year period, which may be renewed.
In order to obtain a judicial decision on customs surveillance, the trademark owner must demonstrate the probability that counterfeit products will be imported and the likelihood that without an injunction, irreparable harm would ensue. Tese requirements will normally be considered to have been satisfied if the trademark owner can prove that counterfeit goods have repeatedly been imported into Norway. Te court will then instruct customs to confiscate and retain counterfeit goods whenever they are imported. Te request need not indicate a specific consignment or product, or identify the owner of the suspect goods. Customs will disclose the name of the owner to the plaintiff when the goods in questions are stopped.
When customs discovers counterfeit products, the goods will be withheld from release and the court and the trademark holder will be informed accordingly. Te trademark holder or its representative is then requested to inspect the goods to establish whether they are in fact counterfeit. Te benefit of an injunction is that the plaintiff then has six weeks, counted from the notification of detention, to initiate court proceedings against the importer. Tis gives it more time to act than with voluntary detention by the customs authorities and has turned out to be an effective system for tackling the importation of counterfeit goods. Contrary to the voluntary system, a preliminary injunction entails a duty for the customs authorities
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to detain goods suspected of infringing concrete IP rights and is therefore a more reliable alternative for IP rights holders.
Custom notice application
It is possible to file a customs notice application requesting customs to detain goods suspected of infringing IP rights. Tere is a standard form for this purpose that enables customs to identify easily suspected infringing goods. Such notices remain in force for 12 months and can be extended for successive 12-month periods.
Criminal prosecution
Te intentional infringement of IP rights during the course of trade is a criminal offence. Violating the Trademark Act, the Patents Act, the Designs Act and the Copyright Act may result in fines or imprisonment for up to three months. For wilful copyright infringement committed under particularly aggravating circumstances, the penalty may be imprisonment for up to three years.
Anyone who intentionally and materially infringes Section 30 of the Marketing Practices Act will be subject to fines, imprisonment for up to six months or both, unless a stricter penal provision applies. Accessories are liable for the same penalties.
IP rights infringements are normally subject to public prosecution only at the request of the plaintiff.
Civil enforcement
Domestic legislation and court systems provide rights holders with several measures for enforcing their rights, the most common being:
• Measures in connection with customs surveillance • Cease and desist letters • Interim injunctions • Full proceedings • Judicial mediations
• Proceedings before the Committee for the Control of Unfair Competition.
Lill Anita Grimstad is head of legal & litigation and a partner at Bryn Aarflot. She can be contacted at:
lag@baa.no
World Intellectual Property Review May/June 2011 63
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