Jul 01, 2023 (Newsletter Issue 7/23)IPO Relocated and New Regulation on Fees for IPOs Services On 1 July 2023, a new Regulation on Fees for the Intellectual Property Office's services entered into force. Expense items remain for the most part unchanged, however Article 1 on reimbursement of fees and Article 6 on Supplementary Protection have been altered.
There is now a provision for the refund of fees paid in excess, as well as annual fees that fall due under proceedings concerning the re-establishment of rights, if such request is finally rejected. Also, in accordance with the amendments to the Patent Act No 17/1991 with Act No 57/2021, a handling fee for a notification of an exemption from Supplementary Protection has been added.
The Regulation 536/2023 is available here.
Furthermore, the Icelandic Intellectual Property Office has moved its offices to Katrínartún 4, Reykjavik.Source: www.hugverk.is Feb 03, 2023Minor Changes to the TM RegulationChanges to Regulation No. 850/2020 on the applications for and registration of trademarks, collective marks and guarantee and quality marks entered into force on 30 January 2023, with Regulation No. 59/2023. The changes mainly concern minor rectifications in relation to references or wording, aiming at improved clarity.
The main changes can be seen hereSource: https://www.hugverk.is/en/newsroom/news/law-and-regulations/changes-to-the-regulation-on-trademarks Nov 05, 2020 (Newsletter Issue 18/20)IP Office Provides Madrid e-FilingSince October 7, 2020, the Icelandic Intellectual Property Office has given access to Madrid e-Filing service to trademark applicants via its website. Brand owners will have the possibility to file international applications online.
Conveniently nestled within the e-Filing service, users will have direct access to Madrid Goods & Services Manager to check the classification of terms in their list of goods and services.
The extension to Madrid e-Filing allows Icelandic brand owners to take advantage of its latest feature: the ability to communicate with their Office of origin and immediately receive and respond to irregularities issued by WIPO electronically. This feature is available to all participating Offices and helps to save a significant amount of time in the processing of international registrations.
For more information, please click hereSource: www.wipo.int Sep 24, 2020 (Newsletter Issue 15/20)Trademark Act AmendedThe Icelandic Intellectual Property Office (ISIPO) informs that the Trademark Act No 45/1997 was amended to incorporate the European Union trademark directive 2015/2436 into Icelandic law. The changes entered into force on September 1, 2020.
The act contains various new provisions and harmonizes the EU and EEA trademark systems, not only regarding trademarks but also collective marks and guarantee and certification marks. Some of the main changes are the following:
- No requirements for trademarks to be graphically represented
- New non-traditional trademarks are registerable e.g. colours, sounds, holograms and animations
- Change of protection period for trademarks is now 10 years from application date. The protection period of earlier trademarks does not Change.
- Registration requirements of trademarks are clarified, and refusal grounds divided into absolute grounds and relative grounds.
- Clarification on grounds for refusal for trademark applications submitted in bad faith
- In opposition proceedings, trademarks will receive a registration date after the finalisation and possible court proceedings. Only then does the five-year use requirement period begin.
- Any third-party can now file observations prior to registration without having a legitimate interest
- Non-use of trademark is now acceptable as defence in opposition proceedings
- Revocation and invalidity procedures are now separated into different procedures
For further information, please see the article of our Country Index contributor for Iceland, the law firm LEX hereSource: www.lex.is; www.isipo.is Apr 02, 2020 (Newsletter Issue 5/20)
Official IP Fees Changed Soon
The Icelandic Intellectual Property Office informs about the new Regulation no. 60/2020 on fees for patents, trademarks, designs, etc., which has been adopted by the Ministry of Industries and Innovation.
As of May 1, 2020, the official fee for filing a word mark will be ISK 33,100 for one class and ISK 7,100 for each additional class.
Source: www.gamli.els.is
Aug 22, 2019 (Newsletter Issue 11/19)
Patent Office's Name Changed
On July 1, 2019, the Icelandic Patent Office – IPO, changed its name to the Icelandic Intellectual Property Office – ISIPO.
Source: www.patice.is
Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. Registration Iceland has notified WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which entered into force on February 1, 2019.
According to the said notification:
- new Rule 27bis(1) of the Common Regulations, providing for the possibility to file a request for division, is not compatible with the law of the Contracting Party and does not apply to it; and,
- the law of the Contracting Party does not provide for the merger of registrations of a mark.
As a result, the Office will not present to WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Mar 29, 2017 (Newsletter Issue 6/17)Change of Practice for Applicants Outside Paris Convention/WTOAs from February 1, 2017, the Icelandic Patent Office will demand a certified attest of a domestic registration according to article 33 of the Trademark Act no. 45/1997 in cases where the applicant is not a resident of a state which is party to the Paris Convention or the World Trade Organisation (WTO). It will also be sufficient to show evidence that the applicant’s company has operations in a member country of the Paris Convention or WTO or that an individual applicant has citizenship in a member country of the Paris Convention or WTO to comply with the requirements of article 33.1 of the Trademark Act. A list of countries that are members of the before mentioned agreements can be found here
Source: Tego IP Consulting, Iceland Feb 22, 2017 (Newsletter Issue 4/17)Official Fees IncreasedThe Icelandic Patent Office has announced that New Regulation no. 818/2016 on fees for patents, trademarks, designs, etc., has been adopted by the Minister of Industries and Commerce. The fee increase was effective January 1, 2017.
More information about the new regulation is available here
Source: www.patent.is Oct 28, 2014 (Newsletter Issue 16/14)
Official Fees Increased
The Icelandic Patent Office has announced on its website the new Regulation no. 804/2014 on fees for patents, trademarks, designs, etc. which has been adopted by the Minister of Industries and Commerce. The new regulation is effective on 1 December 2014.
The official fee for filing a word mark is ISK 28,000.00 (approx. EUR 183.00) for one class and ISK 6,000.00 (approx. EUR 39.00) for each additional class.
Source: www.els.is
Sep 27, 2012 (Newsletter Issue 14/12)
Accession to Singapore Treaty
The Government of the Republic of Iceland has now deposited its instrument of ratification of the Singapore Treaty on the Law of Trademarks, which will enter into force, with respect to the Republic of Iceland, on 14 December 2012.
www.wipo.int
Jun 25, 2012 (Newsletter Issue 10/12)Trademarks Act ChangedOn June 1, 2012, the Icelandic parliament (PTO) passed a bill to amend the 1997 Trademarks Act . The bill introduces various changes that benefit trademark owners and entered into force on June 14th, 2012.
The most important changes are:
- Introduction of an administrative invalidation process for trademarks
- Bad faith clause re-instated
- PTO is required to give access to pending trademark applications upon specific request
- All communication with the PTO must now be conducted in Icelandic
- Right to reinstate trademark or trademark application if the term to respond to a refusal or renewal has been missed
- Division of applications and registrations
- New official fee for filing oppositions
For further information please also check the article of Mrs Brynhildur Palmarsdottir from Arnason Faktor, Intellectual Property Consulting here
Source: Arnason Faktor, Iceland
Feb 01, 2011 (Newsletter Issue 2/11)
Official Fees Changed
The Icelandic Patent Office (ELS) has changed its official fees for trademark applications effective from April 1st, 2011.
The official fees for word marks is ISK 22,000.00 (approx. EUR 140.00) for one class and ISK 5,000.00 (approx. EUR 32.00) for each additional class.
Source: GST PATENTBUREAU, Reykjavík, Iceland
The Legal basis is the Icelandic Trademark Act No. 45/1997, (hereinafter “the Icelandic Trademark Act”), last amended in 2020.
Iceland is a member of the Madrid Protocol.
Trademark protection is obtained by use or registration.
in Iceland.
The Icelandic Trademark Act set out in Chapter 1, Art. 3:
"Trademarks right may be established by:
1. the registration of a trademark for goods or services in accordance with the provisions of this Act, or
2. the use of a trademark which is and has been used in this country for goods or services.
A trademark which is deemed not to fulfil the requirements of this Act for registration cannot acquire trademark right by being taken into use. A trademark which does not fulfil the requirements of the Act for distinctiveness at the commencement of use may, however, establish a trademark right if the mark acquires distinctiveness through use."
Nice classification, 12th edition
According to The Icelandic Trademark Act; Chapter 1, Article 2 "Trademarks can be any kind of signs, such as words (personal names included), designs, patterns, letters, numerals, colours, sounds and shapes or the packaging of goods, provided they are suited for:
1. distinguishing the goods and services provided by one party from the goods and services of other parties, and
2. being identified in the Trademark Register in such manner that authorities and the general public are able to understand the clear and precise subject matter of the protection which the proprietor is granted.”
Sound marks are registrable. Olfactory marks are not registrable.
The following trademark types are registrable: trademarks, service marks, collective marks, trade names and trade dress.
The application is filed at the ISIPO. It must be filed in Icelandic.
All communication with the ISIPO must be in Icelandic.
Multiple-class applications are possible.
Foreign applicants from countries outside the EEA / EFTA need a local agent.
No power of attorney is needed unless specifically requested by the ISIPO.
As of February 1, 2017, a foreign applicant who has neither activities in Iceland nor is a resident of a state which is a party to the Paris Convention for the Protection of Industrial Property or the agreement on the establishment of the World Trade Organisation (WTO) needs to prove that he has obtained registration for a corresponding mark in his home country for the goods or services covered in his application.
The application process includes a formal examination, an examination as to absolute grounds (e.g. distinctiveness) and an examination as to relative grounds (e.g. prior trademarks). Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The processing time from first filing to registration or first office action is approx. 2 to 4 months.
After registration, the trademark is published in the monthly “Hugverka-tí∂indi” (Gazette of the ISIPO). Publication date is the 15th of each month.
National:The opposition period is 2 months from the date of publication of trademark registration in the Official Bulletin.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
Protection dates back to the date of application. Trademark registration is valid for 10 years from the date of application. The registration is renewable for periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a word mark is ISK 37,900 for one class and ISK 8,200 for each additional class.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
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Jan 05, 2024
GH Sigurgeirsson Intellectual Property, Reykjavik, Iceland