Is there a time frame for the trademark registration approval?
The average time frame for the registration approval is 4 months, if no objections or oppositions arise.
If I register my trademark in Iceland, do I have protection in other territories?
No. The territorial limit of your registration will be Iceland only.
Do I need to sign a Power of Attorney?
Yes. Trademark application requires a signed power of attorney.
Are there any benefits from a pre-filing use of the trademark?
Yes. You may benefit from pre-filing use in several ways:
- Show distinct characteristic of the mark
- Defeat opposition to trademark application based on non-distinctiveness
- Establish rights if you can prove pre-filing use
Will there be problems in case I don’t use my trademark after registration?
Yes. Non-use is a potential ground for cancellation of registration.
What are the types of trademark that can be registered in Iceland?
If you can graphically reproduce a sign and if it adds more distinct characteristic to your good/service, then you may register your mark. Marks that are allowed by law to be registered:
- Shapes (three dimensions),
- Trade dress,
- Collective marks,
What are the phases of application after a trademark has been filed in Iceland?
There are three phases of trademark application in Iceland namely: examination, registration and publication.
Examination - The trademark office will examine the application in terms of: classification, clarity, formalities, conflict with other applications, descriptiveness, and distinctiveness.
Registration - Once the examiners passed the application, the trademark office will then issue the registration grant.
Publication - The public will have access to the application details and third parties will have a chance to oppose after the following details are published: mark, applicant name, applicant's address, filing date, goods and services, representation and priority claim.
What type of trademark is non-registrable?
You cannot register any mark that contradicts Iceland’s standards of moral or any mark that poses a threat to public order. Terms that have a common or broad meaning are also non-registrable. Names/symbols/flags of states/nations/international organization are prohibited for registration. Any mark that is non-distinct and any mark that functions primarily as a geographical location is non-registrable.
Does Iceland use the "Nice Classification" system?
Yes. Nice Classification is effective in Iceland. Only one application is necessary for trademarks that cover multiple classes of good/service.
Is there any possibility to claim priority in Iceland?
Yes, but the applicant must meet the following requirements:
- Applicant’s country of origin is a member of Paris Convention
- Application in home country was filed within the past 6 months
If these requirements are met, the filing date in the home country can be claimed as the filing date in Iceland.
What do I need to do to satisfy the use requirement?
Use your trademark five years from the date of registration. The courts in Iceland reserve the rights to define the details of the user requirements (trade, commerce, marketing, advertising, etc.). However, the law mandates owners to use their trademark within the jurisdiction of Iceland.
Once my trademark has been registered, for how many years will be valid?
Validity of a registered trademark will last 10 years.
What will be the renewal date of my trademark?
Count 10 years from the date the registration was granted.
Is it legal to use my trademark even if it is not yet registered?
Yes. You may legally use your unregistered trademark for selling goods/services.
Does having a registered trademark in Iceland afford me any right?
There is no need for registration in order to obtain rights to a trademark. Prior use or the first party to file the registration gets the right.
What is the web address of the trademark national office?
You can access the web address of the trademark national office by clicking this link: http://www.els.is/
Is there any need to use my trademark before I apply for registration?
Intent to use or actual use of trademark is not mandatory for registration.
What are the grounds for a Trademark Application to be opposed?
Application for trademark registration can be opposed if:
- proprietary rights are violated,
- the mark is descriptive, non-distinctive, deceptive, misleading, disparaging, or causing confusion
- there is breach of copyright
- the mark is confusingly similar with an existing registered mark
- the mark uses any protected emblem or insignia
- rights to a business/company name or personal name are violated
- the word has broad or generic meaning
- there is violation in a registered design
- rights of a famous mark are violated
- the mark is indicative of a geographical location
- public policy or moral standards are violated
Who can contest my trademark registration?
Anyone who is interested may oppose the registration.
Is it possible to cancel a registration?
Yes. Even if your trademark is already registered, cancellation is still possible on the grounds of:
- Violation of proprietary rights
- Breach of copyright
- Mark is proven to not meet the standards in terms of distinctiveness
- Mark is proven to be descriptive, deceptive, misleading, or disparaging
- Mark is proven to violate rights in company name, personal name, registered design, or notorious mark
- Mark is proven to contradict public order and moral principles
- Mark is proven to cause confusion with respect to the product type, origin or condition
- Mark is proven to look almost or exactly like a mark which is internationally registered
- Mark is to be confused with a mark that was registered earlier in another country
- Mark has been inactive or failure to use the mark according to the requirements of Trade Mark Act Article 25
Are there any rights established by having a registered trademark?
Yes. Having a registered right will help the owner establish the following rights:
- Exclusive right to use the mark
- Right to oppose and request an action to cancel any conflicting later applications/registrations
- Right to give license to other businesses to use the mark
- Right to file an infringement case against companies that use similar-looking marks
- Right to obtain damages from the infringing party
- Right to complain at ISNICS regarding unauthorized use of domain name
- Right to apply for seizure or confiscation of fake goods
How long is the opposition period?
The opposition period will start on the date the mark was published and will end two months after the publication date.
Is Iceland a member of the Madrid System?
Yes. Iceland is a Madrid Protocol member.
Do I need to present periodic statement of use?
No. Periodic statements of use or any file that will set forth the use of trademark are not needed.
When should I renew my trademark?
Renewal should be done every 10 years.
What will be the renewal date of my trademark?
Count 10 years from the date the registration was granted.
Is there any documentation that should be presented when renewing a trademark?
If the renewal will be prepared by the same attorney that processed the registration, no documentation is necessary. Otherwise, you will be required to submit a power of attorney.
If my trademark expires, do I have a grace period?
After the trademark has expired, you still have 6 months to process the renewal. Another 2-month extension is granted to those who are willing to pay penalties.
What is a trademark?
A trademark identifies products and services in order to distinguish them in the market. The name, the verbal element, is not the only component that distinguishes a trademark; figurative elements such as logos, design, images, colors and sounds also create an identity that can be protected through trademark registration.
With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.
Some symbols to consider:
® Means the trademark is registered.
TM Some countries use this symbol to show that the trademark has been filed at the trademarks office and is still undergoing the registration process.
SM Some countries use this symbol to show that the service mark has been filed at the trademarks office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
There are many ways to lay claim to your work. Trademarks, patents, and copyrights offer protection for owners of intellectual property. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or a service in the market.
A patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You cannot patent an idea because we all have them. You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to a problem to secure a patent.
Copyright protect published, performed, or printed creative works. People who produce artistic or musical work seek to protect their “right” to stop others from “copying” what they do. Copyright protection protects any original creative works of authors including:
- a) artwork (2 or 3 dimensional),
- b) photographs, graphic drawings, and designs as well as other forms of creativity;
- c) songs, music, and sound recordings of all kinds;
- d) books, manuscripts, publications, and another written work; and
- e) plays, movies, shows, and other performance arts.
A trademark, patent, or copyright are all examples of ways you protect your intellectual property. Your right to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.
What is the difference between TM, SM, ® and other symbols?
You recognize a registered trademark by the symbol of a circle-R following the trademark name or graphic image. Various typographic symbols show copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but a best practice is to use a circle-R or circle-C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.
- TM: The TM sign shows the brand name for an unregistered trademark classified as a product (classes 1 to 34). The owner uses this sign to mark what they believe is their brand mark.
- SM: The SM sign is identical to the TM sign except it designates a service mark (classes 35 to 45).
- ®: ®: Use the ® symbol once you register a trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to mark a copyright. The word copyright is substitute sign for Follow it with the year of the publication and owner's name. Use it whether the work has obtained copyright registration or not.
- Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
What are trademark classes?
Trademark Offices around the world use classes to divide commercial products and services into defined categories. When you apply for your trademark to protect your brand, you must define the class or classes that you believe are best describe your business activity.
There are 45 classes – 34 for products and 11 for services – which countries from around the world have standardized for international use under the 'Nice International Classification'.
These classes group all known products and services. You can register the same trademark if there are similar classes, for example, you may register the trademark KING for computers in class 23, and you can also register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is possible, then for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. You can choose multiple classes under which to conduct business if you feel the protection must extend beyond only one class.
You can perform a search of your class with the following tool Trademark Class Search
Why do I need to perform a trademark search?
Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name?
Too many people use a name without knowing if they have legal coverage, and they put up big marketing campaigns with names that later they find they cannot use. Performing a Comprehensive Search Study before you decide to register your brand mark is a wise decision especially when you consider future risks of litigation.
It is a good idea to conduct a Study before you start doing business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. That company may be able to object to your use of the trademark and prohibit you from using the mark in a court of law.
Do I need an Attorney to perform a Trademark Search?
No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you find professional help. Our company offers the service Trademark Comprehensive Study. The Study will give you details about the classes where might want to register your trademark, it will also list identical and similar trademarks, and finally, it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you have some knowledge about trademark registration, you can search using any online trademark search tool. If not, we recommend hiring a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially a trademark search because the entire process is complex and takes time.
Notice that if you do not complete the application process carefully, the registration process could be extended for many months and cost far more than you intended to pay. The trademark search is a critical part of the process.
A broad trademark search is essential in today's marketplace given the increasing number of unregistered and common law marks. Globalization of markets also raises the question of entering international markets and registration of marks in foreign countries to protect your brand and your property rights.
You need to understand that even a completed comprehensive trademark search does not guarantee acceptance and registration of your mark. A Trademark Comprehensive Study includes a more extensive review process and, more significantly, a formal opinion estimating the probability of your application's acceptance.