Iceland is a member of the World Intellectual Property Organization (WIPO) and a party to most major international IP protection agreements.
IP rights and their protection are substantially dependent on international cooperation. Iceland is a party to a number of international agreements, including: The Paris Convention for the Protection of Industrial Property, the Berne Convention for the Protection of Literacy and Artistic Works, the Trade Mark Protocol Relating to the Madrid Agreement, the Patent Cooperation Treaty (PCT), the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs and the European Patent Convention (EPC).
Moreover, Iceland, as a member of the World Trade Organization (WTO), has adapted Icelandic legislation to the provisions of TRIPS (Trade-Related Aspects of IP Rights).
Furthermore, the Agreement on the European Economic Area (EEA) has led to several legislative amendments in Iceland to accord with the directives and regulations of the EU.
The Agreement on the EEA is an agreement between the European Free Trade Association (EFTA) and the EU.
EFTA consists of four countries: Switzerland (Switzerland is not a member of the EEA), Norway, Iceland and Lichtenstein, while the EU consists of 28 countries.
The changes to Icelandic law allow foreign agents to represent IP rights owners before the Icelandic authorities, but they must reside within the EU or the EEA.
However, all communication between representatives and the Icelandic Patent Office (IPO) must be in Icelandic.
Obtaining IP protection in Iceland
Patents protect the technical realisation of an idea, such as equipment and products, as well as methods or applications.
The basic requirements for granting a patent for an invention are that it be new, inventive and capable of industrial application:
The exclusive rights established in patent legislation entitle the proprietor to prohibit others from manufacturing, importing and selling an invention protected by a patent.
Applications for patents in Iceland shall be submitted to the IPO. An application form must be filed in and filed together with a detailed description of the invention, as provided for in the Icelandic Patents Act.
The patent claims, abstract, and the text on the drawing to be published will be made available in Icelandic translation before the application is made accessible to the public.
The description shall be available translated into Icelandic or into English before the patent is granted.
Origin of the Icelandic patent applications
The majority of patent applications in Iceland come through the European Patent Office (EPO) as national validations of European patents. Valid registered patents at the end year 2013 were 3817. Of those, 592 were national patents and 3225 were European patents. Iceland has been a member of the European Patent Convention (EPC) since 2004.
Definition and use
Trademarks are used to label goods and services. Trademarks may be any type of visible sign used to differentiate the goods or services of one party from the goods or services of other parties. Moreover, trademarks are often used as company names and domain names.
The rights established by trademarks legislation entitle a trademark proprietor to exclusive rights to use the trademark in Iceland and, as a result, the right to prohibit others from using, for commercial purposes, marks that are identical or similar to its own trademark.
Trademark rights are obtainable through use or by registration. Registered trademark is valid for 10 years at a time and is renewable for as long as the trademark owner desires.
Changes to the Trademark Act
In June 2012, invalidation of registered trademarks due to non-use became possible through administrative decision. Another notable change is that a trademark cannot be registered if it is confusingly similar to a mark that has been in use in another country, provided that the application is in the same or similar class of goods or services as the foreign mark and the applicant is aware of or should have been aware of the foreign mark.
Applications and valid registrations
Applications for trademarks shall be submitted to the IPO. An application form must be filled in and filed together with a detailed description of the trademark. There were 85,882 valid registered trademarks in Iceland at the end of 2013.
Of those, 54,431 were national trademarks and 31,451 were international trademarks. Iceland has been a member of the Madrid Protocol since 1997.
A design is defined by the visible appearance of a product. Even if a product has a technical function, only its appearance is protected by design protection. The goods can be handmade or mass-produced. Examples of goods that can enjoy design protection include furniture, clothing, packaging, machinery, tools, foodstuffs and jewellery.
A product need not be in three-dimensional form to enjoy protection.
It can be two-dimensional, such as a screen display on a computer, a graphic symbol, or a decoration on another product, such as wallpaper.
The more original and innovative the design is, the greater the likelihood it can be protected.
Registering a design grants the owner of the registration exclusive rights to utilise that design and the right to ban others from utilising the design in question. Design rights are obtainable only through registration. Applications submitted to the IPO apply in Iceland.
However, it is also possible to apply for an international registration of a design (Hague system). Iceland has been a member of the Geneva Act of the Hague Agreement for the International Registration of Industrial Designs since 2004.
By registering a design with the IPO, it is possible to protect the design for 25 years.
Copyright has become of immediate interest due to the new digital technology, which has resulted in movies and music being distributed differently than before.
Pirate copying of goods and illegal parallel imports are an increasing challenge. IP attorneys assist with solutions to prevent the import and sale of such goods, particularly by the assistance of custom control and handling legal conflicts.
An international network exists that makes it possible to meet such problems abroad.
Licensing IP rights
A licence includes permission to use an IP right under defined conditions. A licence denotes the permission to use the right within a defined time, context, market line, or territory. An assignment denotes the transfer of ownership (title).
Accordingly, an assignment conveys ownership, but ownership remains with the licensor.
In IP law, important distinctions exist between “exclusive licences” and “non-exclusive licences”. An exclusive licence does not necessarily mean that this is the one and only licence granted by the licensor.
More commonly, the licence is exclusive as to a defined scope such as product line, context of use, territory, or time period.
In an exclusive licence, the licensor expressly or impliedly promise the licensee that the licensor will not grant other licences of the same rights within the same scope or field covered by the terms of the exclusive licence.
However, the owner of rights can grant as many non-exclusive licences of the same rights as it chooses.
A compulsory licence allows certain parties to make certain uses of IP rights without the explicit permission of the owner concerned.
Patent licensing in Iceland
A licence to exploit patents or applications is considered an exclusive patent licence unless non-exclusivity is expressed clearly in the patent licence agreement.
It is not compulsory to record the granted licence in the Register of Patents. In practice, the IPO recommends strongly to always register the grant of a licence.
Not doing so can under certain circumstances cause the loss of the licensor’s rights.
It is a general rule that a compulsory licence may only be granted to a person who has not been able to reach an agreement to obtain a licence on reasonable terms and may be presumed to be capable of exploiting the invention in a reasonable and acceptable way and in accordance with the terms of the licence.
Trademark licensing in Iceland
The trademark owner should exercise control over the nature and quality of the goods or services sold by the licensee under the licensed mark.
Licensing of a mark without adequate quality control is ‘naked licensing’, which raises the risk that the public will be deceived into thinking that the goods or services provided by the uncontrolled licensee are of the same general nature and quality as those previously provided, or as those provided by other licensees.
This can result in the mark ceasing to serve as a symbol of quality and controlled source, causing the mark to become ‘abandoned’ in the sense that the word or symbol no longer has significance as an identifying mark.
The proprietor of a trademark may grant others authorisation to use the mark commercially (a licence).
Licences may be exclusive or non-exclusive and may cover all or part of the goods or services for which a trademark has been registered.
Unless it is expressly agreed, a licensee may not transfer its rights. The proprietor of a trademark or licensee may request that a licence be entered in the Register of Trade Marks.