TRADEMARKS FILING AND REGISTRATION IN ICELAND
A trademark in Iceland represents a business identity in the marketplace. It may indicate a certain quality, reputation and goodwill and can therefore be particularly valuable when marketing goods and services.
In order to be capable of registration, a Trademark must be distinctive and distinguishable and the marks which describe goods and services can’t be registered in Iceland.
Also for trademark registration in Iceland, the mark should not be similar or deceptively similar to a trademark filed or registered in Iceland.
To register a Trademark in Iceland, one can file the same with the Icelandic Intellectual Property Office (ISIPO). Only ISIPO can guarantee the right to exclusive use of a trademark or other signs used in trade.
| Relevant office | Icelandic Intellectual Property Office (ISIPO) |
| Official website of IPOI | https://www.hugverk.is/en |
| Filing principle | First-to-file |
| Nice classification | Yes |
| Paris convention | Yes |
| Madrid system | Yes |
| Single class system | Yes |
| Documents required for filing a trade mark application | Name and address of the applicant, clear representation of the trademark, list of goods and/or services. |
| Prosecution process | Filing, publication, examination, registration, renewal |
| Registration term | 10 years from the date of application |
| Renewal term | 10 years |
Trademarks registrable in Iceland
The most common trademark in Iceland types are:
- word marks,
- figurative marks or
- figurative marks containing word elements
- Shape mark
- Shape mark containing word elements
- Position mark
- numerals marks
- patterns marks
- colours marks
- sounds marks
- Motion mark
- Multimedia mark
- Hologram mark
Trademark Search in Iceland
The ISIPO’s portal provides for both preliminary and advance search services at https://www.hugverk.is/en/search/trademark . Hence, it is suggested that before applying for trademark registration in Iceland, a trademark search is conducted to ascertain the existence of marks similar or deceptively similar to the proposed mark.
Trademark Filing procedure in Iceland
For filing trademark in Iceland, the applicant has to deposit prescribed fees with the ISIPO. After payment of application fees, as per ISIPO, it takes 8-10 weeks for the mark to be published.
Trademark Publication and Opposition in Iceland
After filing, a trademark is published. Before registration of the trademark, an opposition can be filed against the mark within two months from the date of publication.
Trademark Registration and Renewal in Iceland
Once registered, a trademark is valid for a period of 10 years from the date of application and in order to keep trade mark alive and subsisting, it must be renewed every 10 years.
Any person may file an opposition within two months from the date of publication, alongwith the requisite fee[1]. The opposition should be reasoned and should meet the requirements stated in the Trademark Regulation.
As per Article 22, if an opposition does not meet the formal requirements, the Opponent shall be granted a suitable time limit to amend it. However, if amendments are not received by the Icelandic Intellectual Property Office within the stated time period, the opposition shall be dismissed[2].
The Applicant will be notified of opposition and given the opportunity to submit comments thereon. If the Applicant does not wish to file a response against the opposition, it will be submitted for ruling without further comments from the Opponent.
If an opposition to the same mark is submitted by more than one party, it is permitted to combine the cases unless the parties concerned present material viewpoints against such a decision. At the request of both parties involved, it is permitted to suspend proceedings by a minimum of two months, if the parties wish to seek a reconciliation.
A ruling in an opposition matter is notified to the Opponent and the Applicant and published in the IP Gazette.
[1] https://www.country-index.com/country_surveys.aspx?ID=39
[2] https://api.hugverk.is/media/wbuoa1yz/trade-mark-act-w712020.pdf