- Chapter I
- Chapter II
- Chapter III
- Chapter IV
- Chapter V
- Chapter VI
- Chapter VII
- Chapter VIII
- Chapter IX
Trade Marks Act
THE PRESIDENT OF ICELAND
makes known herewith: Althingi has adopted this Act and I have ratified it with my consent.
CHAPTER I General provisions
Article 1
Individuals and legal entities may acquire exclusive right to a trade mark in accordance with the provisions of this Act. Trade marks are distinctive identifications for goods or services for commercial use.
Article 2
Trade marks may be any sort of visible signs suited to distinguish the goods or services of one party from the goods or services of others, such as: - words or word combinations, including slogans, personal names, names of enterprises or real property;
- letters and numerals;
- illustrations and drawings;
- the appearance, equipment or packaging of goods.
A trade mark right cannot be acquired for a sign which shows exclusively a shape which is dictated by the goods themselves, a shape which is necessary due to the technical role of the product or which is intended in some manner for a purpose other than identification.
Article 3
Trade mark right may be established by: - the registration of a trade mark for goods or services in accordance with the provisions of this Act, or
- the use of a trade mark which is and has been used in this country for goods or services.
A trade mark which is deemed not to fulfil the requirements of this Act for registration cannot acquire trade mark right by being taken into use. A trade mark which does not fulfil the requirements of the Act for distinctiveness at the commencement of use may, however, establish a trade mark right if the mark acquires distinctiveness through use.
Article 4
Trade mark right prevents anyone other than the proprietor of the trade mark from using commercially a sign which is the same as or similar to his trade mark if: - it is used for the same or similar goods or services as are covered by the trade mark right and
- there is a danger of confusion, including the conclusion that there is a connection between the marks.
Despite the provisions of the first paragraph concerning the same or similar goods and services, the proprietor of a trade mark may also prohibit its use for other goods and services if the trade mark is well known in this country and the use would comprise misuse or lessen the distinctive nature of the characteristics or reputation of the known mark.
The mark may not be referred to in selling spare parts or accessories for a product without the consent of the proprietor, if this is done in such manner that it could be assumed that the accessories originated with the proprietor or that he had authorised the use of the mark.
Article 5
Commercial use of a trade mark includes, for instance: - placing a mark on goods or their packaging,
- offering for sale, placing on the market or preparing to place on the market, goods or services identified with the mark,
- importing or exporting goods or services identified with the mark,
- using the mark in advertisements, letterheads or in other similar fashion.
Article 6
Provided that the use is in accordance with honest business practice, the proprietor of a trade mark may not prohibit others from using in trade or business: - his own name, name of real property or of his commercial operations;
- descriptions of a type of goods or services, their condition, quantity, use, price, origin, when produced or offered to the public, or of other characteristics of goods or services.
If the owner of a trade mark has placed on the market goods or services which enjoy trade mark right or authorised such, he may not subsequently hamper the use, sale, rental, import, export or other distribution of the goods or services.
Article 7
If two or more parties individually claim a trade mark right to identifications which are confusingly similar an earlier right shall take priority over a later one unless otherwise implied by provisions below.
The protection for a registered trade mark commences on the date of filing or the original date of priority, cf. Articles 17and 18 .
Article 8
A later right to a registered trade mark may enjoy protection parallel to the right of an earlier mark, even though the marks may be confusingly similar, if an application for registration was filed in good faith and the proprietor of the earlier trade mark, despite knowledge of the later mark, has raised no opposition to its use in this country for a continuous five-year period from the date of registration.
Article 9
A later right to a trade mark may also enjoy protection parallel to the right of an earlier mark, even though the marks may be confusingly similar, if the proprietor of the earlier trade mark has not, within a reasonable time, taken the necessary steps to prevent the use of the later mark.
Article 10
In the instances referred to in Articles 8 and 9 the Courts may, should this be considered reasonable, decide that one or both of the marks may only be used in a special manner, e.g. that they be of a certain type, include an additional place name or be distinguished by other means.
Article 11
Upon the request of the proprietor of a registered trade mark, authors and publishers of dictionaries, reference works, school books and other specialised literature, are obliged to ensure that the mark is not used without express mention being made of the fact that this is a registered trade mark.
Anyone failing to fulfil the obligation in the first paragraph must pay for a correction to be published in a manner deemed reasonable.
CHAPTER II Registration of trade marks
Article 12
An application for the registration of a trade mark must be filed in writing to the Icelandic Patent Office, which handles the registration of trade marks and maintains the Trade Mark Register. The application shall specify what is the mark, including an illustration if appropriate, and for what goods or services registration is requested. It shall also give the name of the individual or enterprise applying and be accompanied by the prescribed fee. In addition the application shall be in accordance with the provisions of a Regulation, cf. Article 65 .
Article 13
It is a condition for registration that a trade mark be suitable for distinguishing the goods of the proprietor from those of other parties. A mark which indicates exclusively, or with only minor alterations or additions, the type of product, condition, quantity, use, price, origin or when it was produced, shall not be deemed to possess sufficiently distinctive characteristics. The same shall apply to a sign or word combination which is common in trade or is used in everyday speech.
In order to determine whether a mark has sufficiently distinctive characteristics all circumstances must be considered, in particular how long and to what extent the mark has been in use.
Article 14
A trade mark may not be registered: - if it contains, without authorisation, state emblems, official international symbols, emblems of Icelandic municipalities, official inspection or quality signs, specific names of these identifications of anything else likely to be confused with the above-mentioned symbols and emblems; the prohibition shall include only official inspection and quality signs if registration of the mark is sought for the same or similar products as those for which the above-mentioned signs and symbols are used;
- if the mark is liable to cause confusion, for instance, as to the type of product, condition or origin.
- if the mark is contrary to law or public order or likely to cause offence,
- if the mark contains anything which may give cause to conclude that it is the name of an active commercial operation or the name or portrait of another person, providing this does not involve individuals long dead or if the mark includes a distinctive name of real property or an illustration of it,
- if the mark contains anything which may cause it to be interpreted as the distinctive title of a protected literary or artistic work or if it infringes the copyright of another person to such work or other intellectual property right,
- if the mark is liable to be confused with a trade mark which has been registered in this country or which has been in use here when the application for registration was filed and is still in use here,
- if the mark is liable to be confused with a mark which may be considered to have been well known in this country at the time the application for registration was filed,
- if the mark is liable to be confused with a trade mark which has been internationally registered, provided that this registration was valid in this country before the application was filed, cf. Article 59 .
Notwithstanding the provisions of Articles 4-8 , a mark may be registered if the consent of the trade mark proprietor or other rightholder has been given.
A trade mark for wines and spirits which implies a geographical name for wine or spirits may not be registered unless the product originates at the location in question.
Article 15
The trade mark right acquired through registration does not cover such elements of the mark which could not be registered separately.
Should there be reason to expect that the registration of a mark could cause doubt as to the scope of the trade mark right, specific exclusion from protection of individual elements of it may be made at the time of registration
Should that element of the mark which has been excluded from protection subsequently prove eligible for registration such elements of the mark, or the mark as a whole, may be registered without the restrictions referred to in the second paragraph.
Article 16
A trade mark shall be registered for a specific class or classes of goods or services. Marks may not be registered for an entire class or classes without specifying the goods or services for which trade mark registration is requested.
The classification of goods and services shall be determined by the Minister and advertised.
Article 17
If an application for the registration of a trade mark is filed in this country within six months of the time first application was made for its registration in a country party to the Paris Convention for the Protection of Industrial Property or the agreement on the establishment of the World Trade Organisation (WTO), this application shall have the right of priority from the first date of application if a request is filed to this effect. An application having the right of priority is considered, with regard to later occurrences such as applications from other parties for registration or use of the mark, to have been filed simultaneously with the filing of the application for the mark abroad.
In the case of reciprocal legal protection, the Minister may decide in a Regulation that the provisions of the first paragraph shall also apply to applications filed in countries which are not parties to the Paris Convention or agreement on the founding of the WTO.
Article 18
If application is made for the registration of a trade mark within six months from the first use of the mark for goods or services displayed at an official exhibition or at an international exhibition in this country, the mark shall be considered, with respect to later occurrences such as applications from other parties for registration or use of the mark by others, to have been filed simultaneously with the presentation of the mark at the exhibition.
Article 19
If an application for the registration of a trade mark does not comply with legal provisions or if the Patent Office is of the opinion that other barriers should cause the rejection of the registration, the applicant shall be sent a reasoned statement of refusal and a time limit set within which he may explain his case. Upon the expiry of this period the Patent Office will re-examine its position towards the application.
Article 20
Should anyone claim to the Patent Office that he is the proprietor of a registered trade mark, or a trade mark for which registration has been sought, the Office may recommend that the party concerned institute proceedings within a specified time limit to establish this. In this recommendation mention shall be made of the fact that failure to institute proceedings may result in the Patent Office ignoring his claims.
If legal proceedings are initiated to establish the right to a trade mark, processing by the Patent Office may be postponed.
Article 21
If an application for the registration of a trade mark is deemed to fulfil the requirements for registration the mark shall be registered and published. The published announcement shall include the principal information concerning the registration and an illustration of the mark if appropriate. Trade marks shall be published in a special publication of the Patent Office (the Patent Gazette, ELS-tí_indi).
Article 22
The registration of a trade mark may be opposed after its publication. Oppositions shall be filed in writing to the Patent Office within two months of the date of publication and include the grounds for opposition.
If oppositions are raised to the registration of a trade mark the Patent Office shall re-examine the registration in accordance with the provisions of Article 19 . The proprietor of the registration shall be notified of the oppositions and given the opportunity to file his comments thereon.
If the Patent Office does not take the oppositions into consideration a formal ruling to this effect shall be made known to the opponent and the proprietor of the registration.
If the Patent Office does take the oppositions into consideration a formal ruling on the full or partial invalidation of the registration of the mark, shall be made known to the opponent and the proprietor of the registration.
The result of the ruling referred to in the third and fourth paragraphs shall be published in the Patent Gazette.
Article 23
If an application for the registration of a trade mark, which is based on the right of priority in accordance with Articles 17 or 18 , is filed after a similar mark has been registered and the Patent Office is of the opinion that the application would have prevented the registration, the proprietor of the registered trade mark shall be notified thereof and given the opportunity to express his comments thereupon. Should the application based on right of priority be accepted the registration shall be wholly or partially invalidated.
The provisions of the first paragraph shall also apply when the Patent Office receives notice requesting that an international registration also apply in this country and it is evident that such registration would have prevented the registration of a mark which was applied for after the international registration took effect here, cf. Article 59.
Article 24
At the request of the proprietor of a trade mark and upon payment of the prescribed fee, minor alterations may be made to a registered trade mark, provided that the general impression of the mark is not influenced. Alterations to a registered trademark shall be entered in the Register of Trade Marks and shall be published in the Patent Gazette.
Article 25
If the proprietor of a registered trade mark has not, within five years of the date of registration, used the trade mark in this country for the goods or services for which it was registered, or if such use has not occurred during a continuous five-year period, the registration may be invalidated by verdict of a Court, cf. Article 28 , unless there are valid reasons for the failure to use the trade mark.
If a trade mark is used in a version different from that in the Register of Trade Marks, but such difference is, however, only insignificant and does not affect its distinctiveness, or if the mark has been used on goods or packaging in this country which are intended exclusively for export, such shall be considered to constitute use as referred to in the first paragraph.
If a trade mark is used by a party other than the proprietor but with his authorisation, such shall be considered to constitute use by the owner.
The registration shall not, however be eradicated if use of the mark commences after the end of the five-year period but before a request for invalidation is filed. If a request for invalidation has not been filed until at least three months have passed from the expiry of the five-year period, and the proprietor of the mark has commenced or recommenced its use during the three months prior to the submission of the request for invalidation such use shall not have effect on the request for invalidation, provided the proprietor of the mark knew that the request would be filed when commencing preparations for its use.
Should the use requirement have been complied with for part of the goods or services for which the trade mark was registered the invalidation shall not extend to this part of the registration.
Article 26
The protection of a registered trade mark begins on the date upon which the application in accordance with Article 12 was filed and shall apply for ten years from the date of registration.
In accordance with an application from the proprietor of the mark the registration shall be renewed for a ten-year period at a time, calculated from the end of each period of registration.
Article 27
An application for renewal of a trade mark registration may be filed to the Patent Office as early as six months prior to the expiration of a registration period but no later than six months after the expiration of this period. The prescribed fee shall accompany the application.
Should the Patent Office regard the application as satisfactory the renewal shall be entered into the Register of Trade Marks and published in the Patent Gazette. Should the application be considered unsatisfactory the applicant shall be notified of such and given a specific time limit within which he may rectify the application.
Should no application for renewal be filed within the time limit referred to in the first paragraph the registration of the mark is no longer valid.
CHAPTER III Cancellation of registration
Article 28
If a trade mark has been registered contrary to this Act the registration may be cancelled by verdict of a Court, subject, however, to the provisions of Articles 8–10 . If the reason for invalidation is a lack of distinctiveness of the mark or other causes referred to in Article 13 , assessment shall also have regard to use which has occurred after registration.
Registration may also be cancelled by verdict of a Court if a trade mark: - is not used in accordance with the provisions of Article 25 ,
- has, due to activity or inactivity on the part of the proprietor, acquired a general significance for a product or service in the area covered by the registration,
- is used in a manner which could mislead persons, for instance, as to the type, condition or origin of goods or services.
Article 29
Anyone who has legitimate interests at stake is entitled to initiate proceedings against the proprietor of a mark for the purpose of having its registration cancelled.
In instances covered by the provisions of Points 1–3 of Article 13, the first paragraph of Article 14 ,
makes known herewith: Althingi has adopted this Act and I have ratified it with my consent.
Individuals and legal entities may acquire exclusive right to a trade mark in accordance with the provisions of this Act. Trade marks are distinctive identifications for goods or services for commercial use.
Trade marks may be any sort of visible signs suited to distinguish the goods or services of one party from the goods or services of others, such as: A trade mark right cannot be acquired for a sign which shows exclusively a shape which is dictated by the goods themselves, a shape which is necessary due to the technical role of the product or which is intended in some manner for a purpose other than identification.
Trade mark right may be established by: A trade mark which is deemed not to fulfil the requirements of this Act for registration cannot acquire trade mark right by being taken into use. A trade mark which does not fulfil the requirements of the Act for distinctiveness at the commencement of use may, however, establish a trade mark right if the mark acquires distinctiveness through use.
Trade mark right prevents anyone other than the proprietor of the trade mark from using commercially a sign which is the same as or similar to his trade mark if: Despite the provisions of the first paragraph concerning the same or similar goods and services, the proprietor of a trade mark may also prohibit its use for other goods and services if the trade mark is well known in this country and the use would comprise misuse or lessen the distinctive nature of the characteristics or reputation of the known mark.
The mark may not be referred to in selling spare parts or accessories for a product without the consent of the proprietor, if this is done in such manner that it could be assumed that the accessories originated with the proprietor or that he had authorised the use of the mark.
Commercial use of a trade mark includes, for instance: Provided that the use is in accordance with honest business practice, the proprietor of a trade mark may not prohibit others from using in trade or business: If the owner of a trade mark has placed on the market goods or services which enjoy trade mark right or authorised such, he may not subsequently hamper the use, sale, rental, import, export or other distribution of the goods or services.
Article 7
If two or more parties individually claim a trade mark right to identifications which are confusingly similar an earlier right shall take priority over a later one unless otherwise implied by provisions below.
The protection for a registered trade mark commences on the date of filing or the original date of priority, cf. Articles 17and 18 .
Article 8
A later right to a registered trade mark may enjoy protection parallel to the right of an earlier mark, even though the marks may be confusingly similar, if an application for registration was filed in good faith and the proprietor of the earlier trade mark, despite knowledge of the later mark, has raised no opposition to its use in this country for a continuous five-year period from the date of registration.
Article 9
A later right to a trade mark may also enjoy protection parallel to the right of an earlier mark, even though the marks may be confusingly similar, if the proprietor of the earlier trade mark has not, within a reasonable time, taken the necessary steps to prevent the use of the later mark.
Article 10
In the instances referred to in Articles 8 and 9 the Courts may, should this be considered reasonable, decide that one or both of the marks may only be used in a special manner, e.g. that they be of a certain type, include an additional place name or be distinguished by other means.
Article 11
Upon the request of the proprietor of a registered trade mark, authors and publishers of dictionaries, reference works, school books and other specialised literature, are obliged to ensure that the mark is not used without express mention being made of the fact that this is a registered trade mark.
Anyone failing to fulfil the obligation in the first paragraph must pay for a correction to be published in a manner deemed reasonable.
Article 12
An application for the registration of a trade mark must be filed in writing to the Icelandic Patent Office, which handles the registration of trade marks and maintains the Trade Mark Register. The application shall specify what is the mark, including an illustration if appropriate, and for what goods or services registration is requested. It shall also give the name of the individual or enterprise applying and be accompanied by the prescribed fee. In addition the application shall be in accordance with the provisions of a Regulation, cf. Article 65 .
Article 13
It is a condition for registration that a trade mark be suitable for distinguishing the goods of the proprietor from those of other parties. A mark which indicates exclusively, or with only minor alterations or additions, the type of product, condition, quantity, use, price, origin or when it was produced, shall not be deemed to possess sufficiently distinctive characteristics. The same shall apply to a sign or word combination which is common in trade or is used in everyday speech.
In order to determine whether a mark has sufficiently distinctive characteristics all circumstances must be considered, in particular how long and to what extent the mark has been in use.
Article 14
A trade mark may not be registered: Notwithstanding the provisions of Articles 4-8 , a mark may be registered if the consent of the trade mark proprietor or other rightholder has been given.
A trade mark for wines and spirits which implies a geographical name for wine or spirits may not be registered unless the product originates at the location in question.
Article 15
The trade mark right acquired through registration does not cover such elements of the mark which could not be registered separately.
Should there be reason to expect that the registration of a mark could cause doubt as to the scope of the trade mark right, specific exclusion from protection of individual elements of it may be made at the time of registration
Should that element of the mark which has been excluded from protection subsequently prove eligible for registration such elements of the mark, or the mark as a whole, may be registered without the restrictions referred to in the second paragraph.
Article 16
A trade mark shall be registered for a specific class or classes of goods or services. Marks may not be registered for an entire class or classes without specifying the goods or services for which trade mark registration is requested.
The classification of goods and services shall be determined by the Minister and advertised.
Article 17
If an application for the registration of a trade mark is filed in this country within six months of the time first application was made for its registration in a country party to the Paris Convention for the Protection of Industrial Property or the agreement on the establishment of the World Trade Organisation (WTO), this application shall have the right of priority from the first date of application if a request is filed to this effect. An application having the right of priority is considered, with regard to later occurrences such as applications from other parties for registration or use of the mark, to have been filed simultaneously with the filing of the application for the mark abroad.
In the case of reciprocal legal protection, the Minister may decide in a Regulation that the provisions of the first paragraph shall also apply to applications filed in countries which are not parties to the Paris Convention or agreement on the founding of the WTO.
Article 18
If application is made for the registration of a trade mark within six months from the first use of the mark for goods or services displayed at an official exhibition or at an international exhibition in this country, the mark shall be considered, with respect to later occurrences such as applications from other parties for registration or use of the mark by others, to have been filed simultaneously with the presentation of the mark at the exhibition.
Article 19
If an application for the registration of a trade mark does not comply with legal provisions or if the Patent Office is of the opinion that other barriers should cause the rejection of the registration, the applicant shall be sent a reasoned statement of refusal and a time limit set within which he may explain his case. Upon the expiry of this period the Patent Office will re-examine its position towards the application.
Article 20
Should anyone claim to the Patent Office that he is the proprietor of a registered trade mark, or a trade mark for which registration has been sought, the Office may recommend that the party concerned institute proceedings within a specified time limit to establish this. In this recommendation mention shall be made of the fact that failure to institute proceedings may result in the Patent Office ignoring his claims.
If legal proceedings are initiated to establish the right to a trade mark, processing by the Patent Office may be postponed.
Article 21
If an application for the registration of a trade mark is deemed to fulfil the requirements for registration the mark shall be registered and published. The published announcement shall include the principal information concerning the registration and an illustration of the mark if appropriate. Trade marks shall be published in a special publication of the Patent Office (the Patent Gazette, ELS-tí_indi).
Article 22
The registration of a trade mark may be opposed after its publication. Oppositions shall be filed in writing to the Patent Office within two months of the date of publication and include the grounds for opposition.
If oppositions are raised to the registration of a trade mark the Patent Office shall re-examine the registration in accordance with the provisions of Article 19 . The proprietor of the registration shall be notified of the oppositions and given the opportunity to file his comments thereon.
If the Patent Office does not take the oppositions into consideration a formal ruling to this effect shall be made known to the opponent and the proprietor of the registration.
If the Patent Office does take the oppositions into consideration a formal ruling on the full or partial invalidation of the registration of the mark, shall be made known to the opponent and the proprietor of the registration.
The result of the ruling referred to in the third and fourth paragraphs shall be published in the Patent Gazette.
Article 23
If an application for the registration of a trade mark, which is based on the right of priority in accordance with Articles 17 or 18 , is filed after a similar mark has been registered and the Patent Office is of the opinion that the application would have prevented the registration, the proprietor of the registered trade mark shall be notified thereof and given the opportunity to express his comments thereupon. Should the application based on right of priority be accepted the registration shall be wholly or partially invalidated.
The provisions of the first paragraph shall also apply when the Patent Office receives notice requesting that an international registration also apply in this country and it is evident that such registration would have prevented the registration of a mark which was applied for after the international registration took effect here, cf. Article 59.
Article 24
At the request of the proprietor of a trade mark and upon payment of the prescribed fee, minor alterations may be made to a registered trade mark, provided that the general impression of the mark is not influenced. Alterations to a registered trademark shall be entered in the Register of Trade Marks and shall be published in the Patent Gazette.
Article 25
If the proprietor of a registered trade mark has not, within five years of the date of registration, used the trade mark in this country for the goods or services for which it was registered, or if such use has not occurred during a continuous five-year period, the registration may be invalidated by verdict of a Court, cf. Article 28 , unless there are valid reasons for the failure to use the trade mark.
If a trade mark is used in a version different from that in the Register of Trade Marks, but such difference is, however, only insignificant and does not affect its distinctiveness, or if the mark has been used on goods or packaging in this country which are intended exclusively for export, such shall be considered to constitute use as referred to in the first paragraph.
If a trade mark is used by a party other than the proprietor but with his authorisation, such shall be considered to constitute use by the owner.
The registration shall not, however be eradicated if use of the mark commences after the end of the five-year period but before a request for invalidation is filed. If a request for invalidation has not been filed until at least three months have passed from the expiry of the five-year period, and the proprietor of the mark has commenced or recommenced its use during the three months prior to the submission of the request for invalidation such use shall not have effect on the request for invalidation, provided the proprietor of the mark knew that the request would be filed when commencing preparations for its use.
Should the use requirement have been complied with for part of the goods or services for which the trade mark was registered the invalidation shall not extend to this part of the registration.
Article 26
The protection of a registered trade mark begins on the date upon which the application in accordance with Article 12 was filed and shall apply for ten years from the date of registration.
In accordance with an application from the proprietor of the mark the registration shall be renewed for a ten-year period at a time, calculated from the end of each period of registration.
Article 27
An application for renewal of a trade mark registration may be filed to the Patent Office as early as six months prior to the expiration of a registration period but no later than six months after the expiration of this period. The prescribed fee shall accompany the application.
Should the Patent Office regard the application as satisfactory the renewal shall be entered into the Register of Trade Marks and published in the Patent Gazette. Should the application be considered unsatisfactory the applicant shall be notified of such and given a specific time limit within which he may rectify the application.
Should no application for renewal be filed within the time limit referred to in the first paragraph the registration of the mark is no longer valid.
Article 28
If a trade mark has been registered contrary to this Act the registration may be cancelled by verdict of a Court, subject, however, to the provisions of Articles 8–10 . If the reason for invalidation is a lack of distinctiveness of the mark or other causes referred to in Article 13 , assessment shall also have regard to use which has occurred after registration.
Registration may also be cancelled by verdict of a Court if a trade mark: Article 29
Anyone who has legitimate interests at stake is entitled to initiate proceedings against the proprietor of a mark for the purpose of having its registration cancelled.
In instances covered by the provisions of Points 1–3 of Article 13, the first paragraph of Article 14 , CHAPTER I General provisions
Article 1
Article 2
Article 3
Article 4
Article 5
Article 6
CHAPTER II Registration of trade marks
CHAPTER III Cancellation of registration