Iceland
Ólafur Ragnarsson of Patice IP Legal on trademarks in Iceland

A national trademark application must consist of any sign that can be represented graphically, such as words, logotypes, letters, numerals, or the shape of goods or packages. Trademarks can also protect devices, certain three-dimensional shapes, slogans, colours, sounds and trade dress.

In addition to the classic trademark registration, it is possible to obtain rights to collective marks, certification marks and service marks. Trademarks that are contrary to moral standards or public order are not registrable, just as generic terms, geographical names or flags, emblems and state symbols are not registrable.

Nor can non-distinctive marks obtain registration, unless acquired distinctiveness through use can be proven. Protection for retail services can be obtained provided the nature of the services in question is clearly defined. Trademarks can be renewed every 10 years, indefinitely.

Examination

An application is examined by the Icelandic Patent and Trademark Office (IPTO) on both absolute and relative grounds for refusal ex officio. Absolute grounds for refusal relate to the trademark itself, and include no objections such as lack of distinctiveness or a risk that the mark is likely to deceive the public or cause offence. In addition to absolute grounds for refusal or registration, objection may also be raised on relative grounds, relating to the rights of third parties. The most important relative grounds for refusal are when marks are confusingly similar to a name or trade name that is being used in the course of trade, a previously registered national trademark or international trademark valid in Iceland, or a mark that is applied for in bad faith.

When necessary, the IPTO issues an office action in the application, providing the applicant with at least one opportunity to overcome the obstacle. Once approved by the IPTO, the application will be registered and a non-extendable opposition period of two months will begin on the date of publication of the registered mark.

The final decision of the IPTO can be appealed to the board of appeals, whose decision of the BoA can then be brought to the District Court of Reykjavik. An appeal must be made within three months of the board of appeals decision.

Rights

Trademark right can be obtained through registration or by use. Registration is therefore not mandatory to establish a trademark right, though it is always recommended due to the ease with which a registered right can be proved to exist.

An application for registration can be filed as an international application designating Iceland or a national Icelandic application.

The IPTO is efficient. A trademark can usually be obtained in three to four months, if there is no objection and requirements are fulfilled.

Protection for unregistered trademarks is available in Iceland on the condition that the mark is established in the Icelandic market. Trademark protection is achieved if the mark is sufficiently well recognised by the relevant consumers of the mark for the goods and/or services to which it applies. An unregistered trademark enjoys the same protection as a registered trademark.

Trademark licensing

A licence includes the permission to use an intellectual property right under defined conditions. A licence denotes only the permission to use within defined time, context, market line, or territory. An assignment denotes the transfer of ownership, or title. Accordingly, an assignment conveys ownership, while 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 duration. Under an exclusive licence, the licensor expressly or implicitly promises 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.

Of course, the owner can grant as many non-exclusive licences as it chooses.

The owner of a registered trademark may invoke its rights against a licensee who contravenes the provisions of a licence agreement with regard to the duration, the version of the mark which may be used, where and when it may be used, or provisions concerning the quality of goods or services offered by the licensee under the trademark. Unless expressly agreed, a licensee may not transfer its rights.

The owner of a trademark or its licensee may, upon payment of a prescribed fee, request that a license be entered in Iceland’s Register of Trade Marks. Licence registration is not obligatory.

The trademark owner should exercise control over the nature and quality of the goods or services sold or offered by the licensee under the licensed trademark.

Licensing of a mark without adequate quality control is known as ‘naked licensing’, which raises the risk that the public will be deceived into thinking that the goods or service provided by the uncontrolled licensee are of the same general nature and quality as those previously provided, or as those provided by other trademark 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.

Legal developments

The most notable trademark developments in Iceland include:

  • In June 2012, invalidation of registered trademarks due to non-use became possible through administrative decision.

  • Class headings merely mean what they state (European Court of Justice of the EU, 19 June 2012, C-307/10 on the interpretation of class headings of the Nice Classification System).

  • 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.

  • The IPTO has decided not to change the practice concerning black and white registered marks covering all colours, contrary to an EU-wide decision.
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