09-27-2012 (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.
06-25-2012 (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
02-01-2011 (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
Legal basis is the Trademark Act of 1997. Iceland is a member of the Madrid Protocol. Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Nice classification, 10th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, holograms, colours, the three-dimensional form of a good or its packaging, and any combination of the mentioned signs. Sound marks and olfactory marks are not registrable.
The following trademark types are registrable: trade marks, service marks, collective marks, trade names and titles of establishment.
The application is filed at the Icelandic Patent Office (IPO). It must be filed in Icelandic.
All communication with the Patent Office must be in Icelandic.
Multiple-class applications are possible.
Foreign applicants need a local agent.
A non-legalised power of attorney is sufficient. Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination as to absolute grounds (eg. distinctiveness) and an examination as to relative grounds (eg. 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 if no opposition is filed.
After registration, the trademark is published in the monthly “ELS-tí∂indi” (Gazette of the Patent Office). Publication date is the 15th of each month.
The opposition period is 2 months from publication of the trademark.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
Protection dates back to the date of application. A trademark registration is valid for 10 years from the date of registration. The registration is renewable for periods of 10 years.
The grace period for renewals is 6 months starting from the expiration date of the trademark.
If the trademark has not been used for 5 years from registration or has later not been used for a continuous period of 5 years, it may be subject to cancellation. Subsequent use of the trademark can restore protection if no third party has applied for an identical or similar trademark in the meantime and if no party has requested cancellation due to non-use.
Trademark fees as from April 1st, 2011: The official fee for word marks is ISK 22,000.00 (approx. EUR 134.00) for one class, ISK 5,000.00 (approx. EUR 30.00) for each additional class.
Trademark Licence Agreement
According to the Icelandic Trademark Act the proprietor of a registered trademark may license his trademark rights. There are no provisions regarding licensing of unregistered trademarks. According to the Icelandic Trademark Act licences may be exclusive or non-exclusive and may cover all or part of the goods or services for which a trademark has been registered. The sale of a registered trademark does not automatically terminate a licence agreement. There are no statutory provisions which require specific terms to be incorporated into a licence agreement.
There are provisions in law for the recordal of a licensee. Recordal is voluntary. There is no time frame for a recordal and there are no documentary requirements as to the form or content of licence agreements.
A licence becomes enforceable against third parties on the application date for entry of the registered user. Once the licence has been recorded, it is published in the Trademark Gazette on the 15th day of each month.
There is an evidentiary presumption that use by a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings. He may also call upon the owner to institute infringement proceedings. The licensee is not entitled to institute proceedings in his own name, even if the proprietor refuses or neglects to do so.
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