Legislative Texts
EINKALEYFASTOFAN
(Translation published with consent by the Ministry of Industry and Trade).
Act No. 47 of May 2nd, 1968,
Act No. 31 of May 15th, 1984,
Act No. 67 of May 7th, 1993.
Trade Marks Act
Table of Contents
page
CHAPTER I General Provisions. .............................................................................. 1
CHAPTER II Registration of Trade Marks.................................................................. 4
CHAPTER III Cancellation of the Registration.............................................................. 6
CHAPTER IV Special Provisions relating to the Registration of Foreign Trade Marks. ..... 8
CHAPTER V Assignment, Licences etc. ..................................................................... 8
CHAPTER VI Prohibition of the Use of Deceptive Trade Marks.................................... 9
CHAPTER VII Provisions regarding Legal Protection..................................................... 10
CHAPTER VIII Collective Marks. ................................................................................. 11
CHAPTER IX Miscellaneous Provisions. ..................................................................... 11
THE PRESIDENT OF ICELAND
makes known: The Altering (Parliament) has passed the following Act and I have ratified it by my consent.
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;
- images and drawings;
- 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: a. b. | if the proprietor of the earlier mark has not within a reasonable time taken the necessary steps to prevent the use of the later mark. if the right to the mark has been acquired by use in different parts of this country, and it is estimated that both marks may also in future be used as hitherto without any essential harm to the proprietor of the earlier right. |
| Article 10 |
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: 1) | if it contains, without due authority, state emblems, official international symbols, Icelandic |
| municipal emblems, official control and guarantee signs, special descriptions indicating the said |
| symbols or emblems or any subject matter which can be confused with the above. This provision |
| shall apply to official control and guarantee signs only if the mark for which registration is |
| applied covers the identical goods or goods of similar kinds as those for which these signs are |
| used, |
2) | if the mark is likely to deceive, |
3) | if otherwise the mark is against the law or public order, or is likely to cause offence. |
4) | if the mark contains intimations which are likely to be construed as the name of the firm of |
| another party or as the name or portrait of another party, always provided that such intimation |
| does not refer to persons long dead, or if the mark contains the distinctive name or the pictorial |
| representation of another party’s real property, |
5) | if the mark contains intimations which are likely to be construed as the distinctive title of the |
| protected literary or artistic work of another party, or if it infringes some other person’s |
| copyright in such work or some other party’s right in a patent, design or in a photographic |
| reproduction, |
6) | if the mark is liable to be confused with a trade mark registered in this country on the basis of a |
| prior application or is liable to be confused with a trade mark which was in use in this country |
| on the filing date of the application and is still in use here, |
7) | if the mark is liable to be confused with a mark which was in use abroad on the filing date of the |
| application and which is still in use there, provided that at the date of the application the |
| applicant knew the mark or ought to have known it. |
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