Why and how to register a trademark in Iceland

The rights to a trademark in Iceland are granted to the person or company that first uses it in this territory. Although registration is not mandatory, in practice it is highly recommended in order to demonstrate clear ownership, prevent future conflicts regarding ownership of the trademark and in order to defend against cases of trademark infringement.

The trademark applications must be filed with the Icelandic Patent (and trademarks) Office (ELS).

Iceland is also a member state to the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible for this country. For further information regarding our services for trademark filing through the Madrid System click here.

It is not necessary for a trademark to be in use in Iceland in order for it to register. However, prior use may be useful as it can help overcome an objection raised on the grounds of lack of distinctiveness, by proving that the trademark has acquired distinctiveness. Such use must be extensive in order to demonstrate acquired distinctiveness.

If you register a combined trademark (which includes both word elements and figurative elements) in Iceland, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.

Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to seek legal remedies.

Third parties may file opposition actions after the registration action of a trademark has been granted, during a period of two months after the publication of the grant of registration. The probabilities of success for an opposition will vary in each case depending on the circumstances.

Although a trademark does not have to be in use in order for it to register, it must not go unused for longer than five years after registration or it will become vulnerable to cancellation actions based on lack of use of the trademark. Lack of use may be justified in some circumstances.

Registered trademarks in Iceland have a validity of ten (10) years from the registration date and can be renewed indefinitely for further periods of ten (10) years. The trademark renewal may be requested during the six (6) months preceding the expiration date or during the grace period of six (6) months following it, upon payment of a late renewal additional fee.

 

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