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: https://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 a company’s products and services and distinguishes them from those of its competitors in the market. The name (the verbal element) is not the only component of a trademark—figurative elements such as logos, design, images, colors, and sounds also create an identity that can be protected by 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 trademark symbol to show that the trademark has been filed at the trademark office and is still undergoing the registration process.
SM Some countries use this service mark symbol to show that the service mark has been filed at the trademark office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
You can lay claim to your work in many ways. Trademarks, patents, and copyrights offer protection to intellectual property owners. 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 services from others 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 alone (otherwise we’d all be doing it). You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to an existing problem.
Copyright protects all types of original published, performed, and printed creative works of art, literature, and music. It prevents people from using, reproducing, or distributing copyrighted works without the permission of the artist, author, composer, etc. Types of work covered by copyright protection include:
- 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.
Trademarks, patents, and copyrights are all examples of ways you can protect your intellectual property. Your rights 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?
The symbol of a circled letter R after a trademark name or graphic image means that the preceding trademark has been registered. Various typographic symbols indicate copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but the best practice is to use 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 or trademark symbol indicates an unregistered trademark for one of 34 different classes of products. Owners use this symbol to claim the preceding name or logo as the Trademark of their product.
- SM: The SM or service mark symbol is similar to the TM symbol except it indicates a claim to a mark for a service (one of 11 classes of service) rather than a tangible product.
- ®: Use the ® symbol once you’ve registered your trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to indicate copyrighted material. The copyright notice should appear on the material as Copyright © followed by the date the work was created, the copyright owner’s name, a period, and finally “All Rights Reserved.” Like this: Copyright © 2021, John Smith. All Rights Reserved. Use it whether the copyright has been registered 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 best describe your business activity.
Countries around the world have standardized 45 classes (34 for products and 11 for services) for international use under the Nice International Classification.
These classes group all known products and services. If applicable, you can register the same trademark in more than one class; for example, you may register the trademark KING for computers in class 23 and register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is, therefore, possible 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. If you feel that protection should extend to include more than one class, you can choose multiple classes under which to conduct business.
You can search for your trademark class with this Trademark Class Search tool.
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 whether or not they have the legal right to do so. They organize massive marketing campaigns with names they later find they’re not allowed to use. Performing a comprehensive search before deciding which trademark to register is a wise thing to do, especially when you consider future risks of litigation.
It is a good idea to carry out some research before starting to do 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. The other company may object to you using the trademark and legally prohibit you from doing so.
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 seek professional help. Our company offers a Comprehensive Trademark Study service. The Study gives you details of the classes in which you might want to register your trademark; it also lists identical and similar trademarks, and finally, you get an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you know a little about trademark registration, you can search using any online trademark search tool. If not, we recommend that you hire a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially the trademark search because the process is complex and relatively time consuming.
Please note that if you don’t manage to complete the application process correctly, the registration can drag on for several months and end up costing 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 trademarks. Globalization also raises the question of entering international markets and registering trademarks in foreign countries to protect both your brand and your property rights.
Please note that even a completed comprehensive trademark search does not necessarily guarantee your trademark will be accepted and registered. A Comprehensive Trademark Study includes an extended review process and, more significantly, a formal evaluation of the likelihood that your application will be successful.