Исландия

CHAPTER I

General Provisions.

Article 1

By registration pursuant to the provisions of this Act persons, firms or companies who carry on trade or

business can obtain an exclusive right to use trade marks as distinctive marks for goods or services offered

by them in their trade or business (trade mark right). [Trade marks may consist of any type of symbol which can be printed and are intended to distinguish

the products or services of one party from the products or services of others, i.e.:

1. a word or group of words, including slogans, personal names, the names of companies or real–

estate properties;
2 letters or numerals;

1. images and drawings;
2. the appearance, container or packaging of a product.]¹
   The provisions of this Act concerning goods shall apply mutatis mutandis to service.
   

^{1 )}Act no. 67/1993, Sect. 5

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Persons, firms or companies who carry on trade or business may possess trade mark right without registration provided that the mark has become established.

A mark is considered to be established when it is generally known in this country within the sphere of the trade concerned as a distinctive mark indicating the goods of the user.

Article 3

Further, any person may, in the course of his trade or business, use as his trade mark his own name or the name of his firm or the name of real property belonging to him, provided that the mark is not used in a manner likely to cause confusion with trade marks belonging to other parties.

The name of another party or of another firm or a distinctive name of real property belonging to another party must not without due authority be used as a trade mark. [This right shall not, however, entitle the trade mark proprietor to prevent others from using his name, the name of his company or the name of his real– estate property for professional purposes in accordance with good business practice.]²

It is also prohibited to use any mark which is liable to be confused with a trade mark already in use in this country by another party. The same provision shall apply to a trade mark already in use abroad by another party, provided that the party who intends to use the mark in this country knows the mark or ought to have known it.

Article 4

The trade mark right obtained pursuant to Articles 1–3 shall preclude parties other than the proprietor from using, in the course of their trade or business and without lawful authority, a mark which is liable to be confused with the trade mark. This provision shall apply to any form of use whether upon the goods themselves or their packaging, in advertising, on business papers or in other ways and whether or not the goods are intended for sale in this country or abroad. The unauthorized verbal use of the mark is also prohibited.

In case a party, without the consent of the trade mark proprietor, in selling spare parts, accessories or the like for goods originating from another party, refers to the trade mark used for such goods in a manner which may create the impression that the articles thus offered originate from the proprietor of the said mark or that the proprietor has consented to its use, such act shall be considered an unauthorized use of the trade mark.

If a party other than the proprietor of the trade mark through any process, repair or the like substantially alters an article carrying a trade mark, the mark must not be used without the consent of the proprietor of the mark if the article is again offered for sale in the course of business, unless the alteration is clearly stated or is otherwise clearly apparent from the circumstances of the case.

Article 5

A trade mark right does not extend to such parts of the mark as mainly serve to make the article, its get–up or wrapping more easy to handle or which have any object other than that of serving as a distinctive mark.

Article 6

Under the provisions of this Act trade marks shall be considered confusingly similar only if they relate to goods of the same or similar kind.

[However, danger of confusion shall be considered to exist in the case of a trade mark that is established in Iceland if the use of another similar trade mark involves abuse of, or reduces the distinctiveness or reputation of, the established trade mark.]³

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If two or more parties claim trade mark rights in marks which are confusingly similar, the right which has first come into being shall have priority unless otherwise implied from the succeeding provisions.

Article 8

[A later right to a registered trade mark may enjoy protection side by side with a right to an older trade mark even though the trade marks are so similar as to be confusable, providing that notification of registration is submitted in good faith and the owner of the older trade mark has taken no action in Iceland in connection with the use of the more recent trade mark for five continuous years from its date of registration, even though he has been aware of the more recent trade mark.]⁴

Article 9

A later right to a trade mark may also exist side by side with an earlier right to a trade mark confusingly similar thereto, namely:

In the cases set out in Articles 8 and 9 the Courts may decide, if it is considered reasonable, that one or both of the marks may be used only in a special manner, for example in a particular design or with the addition of a place name or in another distinct manner.

Article 11

In encyclopedias, handbooks, textbooks or similar literature of professional nature the authors, editors and publishers shall be liable, upon the request of the proprietor of a registered trade mark, to take care that the mark is not reproduced without indicating that it is a registered trade mark.

If any party fails to comply with the provisions of paragraph 1 of this Article, he shall be liable to pay the costs of publishing a correcting notice in the manner which may be deemed reasonable.

^{2 )} Act no. 67/1993, Sect. 6 ^{3 )} Act no. 67/1993. Sect. 7

^{4 )} Act no. 67/1993, Sect. 8

CHAPTER II

Registration of Trade Marks.

Article 12

The Trade Marks Register shall be kept in Reykjavik for the whole country cf. Articles 20 and 21. The registrations are in the hands of the Registrar of Trade Marks appointed by the Minister.

Article 13

For a trade mark to be registrable it must be suitable for distinguishing the goods of the proprietor from those of other parties. A mark which wholly or with merely insignificant alterations or additions denotes the nature, quality, quantity, use, price, origin or the time of manufacture of the goods shall not be deemed to possess sufficiently distinctive features.

In determining whether a mark is sufficiently distinctive consideration must be had for all relevant circumstances, particularly the length of time and the extent to which the mark has been used.

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Article 14

A trade mark shall not be registered:

Notwithstanding the provisions of sub–sections 4), 5), 6) and 7) registration may be granted if the

necessary authority exists and it is considered that the registration will not lead to deception.

Article 15

The trade mark right obtained by registration does not extend to such parts of the mark as are not separately registrable.

If the mark contains such elements as those set out in paragraph 1 of this Article and there are particular grounds for believing that doubt may arise as to the extent of the protection afforded by registration of the mark, such elements may be explicitly exempted from the protection.

If it subsequently becomes evident that parts of the mark which are exempted from the protection have become registrable, a new registration may be granted of these parts or of the mark itself without the limitations referred to in paragraph 2 of this Article.

Article 16

Trade marks shall be registered for one or more classes of goods.

The classification of goods shall be fixed and published by Order issued by the Minister.

Article 17

Application for registration of a trade mark must be submitted in writing to the Registrar of Trade Marks. The application must contain a reproduction of the mark and state the name of the applicant or his firm. Furthermore, the application shall state the goods or classes of goods for which registration is applied and shall, besides, conform to the provisions laid down in pursuance of Article 46.

Article 18

If a trade mark has been used for the first time for goods exhibited at a national or international exhibition held in this country and approved by the Minister, and if an application for registration of the mark

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is made no later than 6 months after being shown at the exhibition, the application shall, in relation to subsequent occurrences, such as other applications or the use of the mark by other parties, be considered as having been filed simultaneous with the introduction of the mark at the exhibition.

The Minister may lay down by Order Issued pursuant to Article 46 of this Act – and in the case of reciprocity – that corresponding provisions referred to in para. 1 hereof shall apply to trade marks which have been used for the first time at official or officially approved international exhibitions held abroad.

Article 19

If the applicant has not observed the provisions laid down for the filing of an application or if the Registrar of Trade Marks considers that other grounds should prevent the approval of the application, the Registrar of Trade Marks shall inform the applicant to this effect with a statement of the grounds on which the refusal is based, and shall fix a time limit within which the applicant may explain his case.

At the expiry of the time limit the Registrar of Trade Marks will decide on his attitude to the application, unless the applicant has been granted facilities for submitting further objections.

The decision of the Registrar of Trade Marks may be [appealed to the Trade Mark and Patent Board of Appeals]^{5 )} or to the Courts in accordance with the provisions of Article 44.

Article 20

If the application is considered to be in proper order and no obstacles are found to the registration, the Registrar of Trade Marks will publish the application as soon as possible. The announcement shall state the main contents of the application and shall contain a reproduction of the marks.

The announcement shall be published in the Government Gazette“, or in a special journal published by the Government. Further provisions concerning the publication will be decided upon by the Minister.

Objections against the registration of the mark, stating the grounds for the objections, must be submitted in writing within two months from the date of publication.

Article 21

After the expiry of the time limit laid down in Article 20 the Registrar of Trade Marks will take up the application for continued treatment in accordance with the provisions of Article 19.

If the application is approved, the mark shall be entered in the Register of Trade Marks and the registration shall be published in accordance with the provisions of Article 20.

If an application which has been published in accordance with the provisions of Article 20 is refused, such refusal shall be published as specified therein.

The decision of the Registrar of Trade Marks may be [appealed by the applicant to the Trade Mark and Patent Board of Appeals]^{6 )} or to the Courts in accordance with the provisions of Article 44.

Article 22

The protection obtained by registration of a trade mark shall be valid from the day on which the application was filed in accordance with the provisions of Article 17, cf. Article 19, and shall continue to be valid for a period of 10 years from the date of registration.

The registration may be renewed upon application by the proprietor for periods of 10 years commencing from the expiry of the period of registration concerned.

Article 23

Application for renewal of a registration must be filed with the Registrar of Trade Marks not earlier than one year before and no later than 6 months after the expiry of the registration period.

^{5 )} Act no. 31/1984, Sect. 1 ^{6 )} Act no. 31/1984, Sect. 2

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If the application is considered to be in proper order, the renewal will be entered in the Register of Trade Marks.

If application for renewal has not been filed before the expiry of the registration period, the Registrar of Trade Marks will notify the proprietor of the mark or his attorney, cf. Article 31. The Registrar of Trade Marks cannot be held responsible for failure to send such notice.

Article 24

At the proprietor’s request minor alterations in a registered trade mark may be made, provided that the general appearance of the mark remains unaffected thereby.

Such alterations of a mark shall be entered in the Register.

CHAPTER III

Cancellation of the Registration.

Article 25

If a trade mark has been registered contrary to the provisions of this Act, the registration may be cancelled by decision of a Court, cf., however, the provisions of Articles 8–10. [However, registration shall not be cancelled due to the danger of confusion with another trade mark if the conditions of Article 25a apply to that trade mark.]^{7 )}

A registration may also be cancelled by a Court decision if the proprietor is no longer carrying on trade or business, or if the mark after registration has patently lost its capacity to distinguish the goods of the proprietor from those of other parties and if the mark has become deceptive or is against public order or if it is likely to give offence.

[Article 25a

If the owner of a registered trade mark has not used the trade mark in Iceland for the goods or services for which it is registered within five years from the registration date, or if no such use has been made for five continuous years, the registration may be invalidated by a Court order unless valid reasons are advanced as to why no use of the trade mark has taken place.

If a trade mark is used in a version other than that set forth in the Register of Trade Marks, jet in such a way as involves an insignificant deviation which does not interfere with its distinctiveness, or if the trade mark has been placed on goods in Iceland which are intended solely for export, or on their packaging, this shall be considered equivalent to use for the purpose of paragraph 1.

If a trade mark is used by parties other than the owner, but with his approval, this use shall be regarded as equivalent to use by the owner.

Registration shall not be cancelled, however, if the use of a trade mark has begun after the conclusion of the five–year period but before the submission of a demand for cancellation. If the demand for cancellation is not submitted until three months or more after the conclusion of the five–year period, but the trade mark proprietor has begun, or resumed use, during the three months prior to the submission of the demand for cancellation, such use shall not affect the demand for cancellation if the trade mark proprietor was aware when he began preparations for the use of the trade mark that a demand for cancellation would be submitted.]^{8 )}

^{7 )} Act no. 67/1993, Sect. 11 ^{8 )} Act no. 67/1993, Sect. 12

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If the obligation regarding use has been met as regards part of the goods or services for which the trade mark was registered, cancellation shall not cover that part of the registration.]^{9 )}

Article 26

Any party who may have a legitimate interest therein may institute proceedings against the proprietor of a mark for the purpose of obtaining cancellation of the registration. Legal proceedings pursuant to the provisions of Articles 13, Article 14, Sub–sections 1, 2, 3 and paragraph 2 of Article 25 may also be instituted by the Registrar of Trade Marks.

[The Registrar of Trade Marks shall be the proper plaintiff in cases under Article 13, sub–sections 1 to 3 of Article 14, paragraph 2 of Article 25 and Article 25a.]^{10 )}

Article 27

Removal from the Register is effected pursuant to a decision of a Court of Law or if the registration is not renewed or on the request of the proprietor.

A copy of any decision by a Court under which a registration is removed or amended shall be sent by the Court concerned to the Registrar of Trade Marks.

CHAPTER IV

Special Provisions relating to the
Registration of Foreign
Trade Marks.

Article 28

If a party who is not carrying on trade or business in this country applies for registration of a trade mark he must prove that a corresponding trade mark is registered by him in his home country in respect of the types of goods for which registration is applied in this country.

In the case of reciprocity the Minister may order that the provisions of paragraph 1 of this Article shall not apply.

Article 29

The Minister may order – in the case of reciprocity – that a trade mark which is not registrable in this country, but which is registered abroad, may be registered in this country in the form in which it is registered in the foreign state concerned, on conditions to be laid down in the Order. Such registration does not offer wider protection than that afforded by the registration of the mark in the foreign State.

Article 30

The Minister may order – in the case of reciprocity – cf. Article 46, that an application filed in this country for the registration of a trade mark in respect of which registration has been applied for abroad, in relation to subsequent occurrences, such as other applications or the use by other parties of the mark, shall be considered as filed simultaneously with the application in the foreign state concerned, provided that the application is filed here within a time limit laid down by the Minister.

^{9 )} Act no. 67/1993, Sect. 13 ^{10 )}Act no. 67/1993, Sect. 14

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The proprietor of a trade mark who is not domiciled in this country must have an attorney domiciled in this country who on his behalf and with binding effect upon him may accept service of writ and other notices concerning the mark. The name and address of the attorney shall be recorded in the Trade Mark Register.

If no qualified attorney is recorded, the proprietor of the trade mark must rectify the omission within a time limit laid down by the Registrar of Trade Marks to be communicated by registered letter or, if the domicile of the proprietor is not known, by advertisement in the ”Legal Gazette“. If no attorney has been appointed before the expiry of the time limit, the mark will be expunged from the Register.

CHAPTER V

Assignment, Licences etc.

Article 32

The trade mark right may be assigned with or without the business in which it is used.

If any party assigns his business, the rights to the trade marks of same will pass to the assignee, unless otherwise agreed upon, or considered to have been agreed upon.

Article 33

The party to whom the right in a registered trade mark has been assigned must notify the assignment to the Registrar of Trade Marks who will record it in the Register of Trade Marks.

Until an assignment has been notified for entry in the Register, the Registrar of Trade Marks may consider the last recorded proprietor as the rightful owner of the mark.

Article 34

[The proprietor of a registered trade mark may grant others a licence to use the trade mark for professional purposes (utilization licence). A utilization licence may involve all the goods or services in respect of which the trade mark enjoys protection, or to a limited part of the registration. A utilization licence may cover the whole country or demarcated regions of it. The proprietor of a registered trade mark may demand trade mark rights over and above those enjoyed by the holder of a utilization licence if he infringes the provisions of the utilization licence as regards the period of validity, the permitted versions of the trade mark, where and when it may be used or provisions concerning the quality of products or services offered under the trade mark by the licensee.

The trade mark proprietor or licensee may, for a specified fee, request that a utilization licence be entered in the Register of Trade Marks and published (cf. Article 20). The same procedure shall apply if a utilization licence expires. The registration authorities may refuse to enter a utilization licence if they consider that the use of the trade mark by the licensee may lead to a danger of confusion. The provision of Article 21, paragraph 4, shall apply regarding appeals against such a refusal.

A licensee may only assign his right if this has been agreed upon.]^{11 )}

Article 35

If the right to a registered trade mark has been pledged or been taken for execution, the proprietor of the trade mark, the pledge or the executing creditor may request that an entry thereof be made in the Trade Marks Register.

^{11 )}Act no. 67/1993, Sect. 15

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CHAPTER VI

Prohibition of the Use of Deceptive
Trade Marks.

Article 36

If subsequent to its assignment or to notification of the granting of a licence the use of a trade mark becomes deceptive the Court may prohibit the use by the party concerned of the mark in its existing form.

The same provision shall apply to other cases where a mark is deceptive or is used in a deceptive manner by the proprietor or by another party with his consent.

Legal proceedings pursuant to this Article may be instituted by the Registrar of Trade Marks or by any party who may have an interest therein.

CHAPTER VII

Provisions regarding Legal Protection.

Article 37

The use of a trade mark contrary to the provisions of this Act may be prohibited by Court decision.

Willful infringement of a registered trade mark shall be punishable with a fine.

The aggrieved party shall be entitled to institute legal proceedings for violation of the provisions of this Act. Such actions shall be dealt with as civil cases in accordance with the procedure laid down in the Administration of Justice Act No. 85/1936, Article 200, paragraph 1, section 2.

As regards actions brought under this Act the Maritime–and Commercial Court of Reykjavik shall be the proper venue for trade mark proprietors who are not domiciled in this country.

Article 38

Any party who willfully or negligently infringes a trade mark right shall be liable to indemnify the proprietor for the damage caused.

If any person infringes a trade mark right without intention or negligence, he shall be liable to compensate the aggrieved party the damage suffered as is deemed reasonable. Such compensation may, however, not exceed the assumed amount by which the infringer has profited.

Article 39

In lawsuits concerning infringement of a registered trade mark the provisions of paragraph 2 of Article 37 shall only apply to the period after the date of the registration.

Article 40

A claim under the provisions of Article 38 expires after 5 years. If the claim is based on a criminal act it will expire after 10 years.

Notwithstanding the provisions of paragraph 1 of this Article an action for damages in respect of an act of infringement of a trade mark occurring after the filing of the application for registration may be instituted, provided that action is brought within one year after the date of registration.

Article 41

In lawsuits concerning infringement of a trade mark the Court may order that provisions shall be made to prevent abuse of the mark. It may thus be ordered that marks on goods which are in the possession of the party concerned or which are otherwise at his disposal shall be deleted or, if necessary that the goods shall be destroyed or surrendered to the aggrieved party against or without compensation.

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If a licence has been granted for the use of a trade mark both licenser and a licensee shall be entitled to institute proceedings for infringement, unless otherwise agreed upon.

A licensee who intends to institute legal proceedings must notify the licenser thereof. Negligence in this respect will result in dismissal of the case.

CHAPTER VIII

Collective Marks.

Article 43

The provisions of this Act concerning trade marks shall apply to Collective Marks to the extent and subject to the modifications resulting from the provisions of the special law in force for such marks.

CHAPTER IX

Miscellaneous Provisions.

Article 44

The decisions of the Registrar of Trade Marks under the provisions of this Act may within 3 months of the date of the decision be [appealed by the applicant to the Trade Mark and Patent Board of Appeals.]^{12 )} Although the question has been dealt with by the Trade Mark and Patent Board of Appeals the matter may be dealt with by the Courts. If an applicant desires a decision by the Courts he must institute proceedings within 6 months after the date of the decision by the Registrar of Trade Marks or the Trade Mark and Patent Board of Appeals.

[A committee of three members, the Trade Mark and Patent Board of Appeals, appointed by the Minister, shall decide in disputes, in accordance with Articles 19 and 21, cf. paragraph 1 of Article 44 of this Act. The Minister of Industry appoints the chairman of the Board who shall be a lawyer, for a three–year term each time. The Minister of Industry appoints other members of the Board, to decide in individual disputes. The Board of Appeals decides on procedure in each case having regard to the principles of civil law procedure. The expenses of the Committee’s work shall be borne by the State Treasury. The parties to the dispute shall pay an appeals fee in accordance with regulations on fees for trademarks, etc.]^{13 )}

Article 45

Any party shall be entitled to acquaint himself with the contents of the Trade Marks Register, either by inspection of the Register or by obtaining transcription thereof. Any person may obtain information as to whether a trade mark is registered.

Article 46

The minister dealing with trade mark matters will issue further provisions governing the filing and treatment of the applications for registration of trade marks, including the fixing of the time limit for filing claims for priority, cf. Articles 18 and 30, regarding the arrangement and keeping of the Register, the publication and contents of the Trade Marks Journal as well as the fees for applications, services, transcriptions etc.

^{12 )}Act no. 31/1984, Sect. 3 ^{13 )} Act no. 31/1984, Sect. 4

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Subject to the limitations which follow from Article 48, the provisions of this Act shall replace the Trade Mark Act No. 43 of November 13th, 1903, although nothing in this Act shall invalidate the marks previously registered. The trade marks registered in accordance with the law hitherto in force shall remain on the Register although they do not fulfill the requirements to be registered as new trade marks under this Act.

Concerning trade marks which are registered under the Law hitherto in force the registration in classes, mentioned in Article 16 shall first be applicable at the renewal of the registration.

Article 48

The time for the coming into force of this Act is January 1st. 1969 and from the same date Act No. 43, November 13th, 1903; Act No. 13, January 13th, 1938; Act No. 77, June 26th, 1941, as well as other Laws contrary to this Act are abrogated.

Applications which have been filed before the coming into force of this Act and have not been finally decided upon shall be dealt with pursuant to the provisions of the Act hitherto in force, unless the applicant desires the application to be dealt with under the present Act.

Given at Reykjavik May 2nd, 1968.

Ásgeir Ásgeirsson.

(L.S.)

Jóhann Hafstein.