Iceland’s trademark system will undergo considerable changes with a new law that will enter into force on 1 September 2020. The act, which will amend various provisions of the Icelandic Trademark Act No 45/1997, was approved by the Icelandic parliament, Alþingi, on 12 June 2020 and incorporates the European Union trademark directive 2015/2436 into Icelandic law. The act contains various new provisions and harmonizes the EU and EEA trademark systems, not only regarding trademarks but also collective marks and guarantee and certification marks.
The aim of the directive is to modernize the trademark system and streamline the registration process in line with the needs of users. The main changes are:
- Trademarks will no longer have to be graphically represented which opens for the registration non-traditional trademarks such as colours, sounds and animations etc. This means that, from 1 September 2020, signs can be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. Furthermore, the extent of the exclusive right must be clear from the specification in the trademark registry.
- The law changes and clarifies the registration requirements of trademarks. For example, to the provision containing absolute grounds, a rejection on the basis that a symbol shows features that increase the value of a product has been inserted and also if a trademark consists of significant elements of an earlier registered plant variety. Furthermore, the provision to reject a trademark application on the grounds that it was submitted in bad faith has been clarified.
- Any third-party will have the right to file observations prior to registration without having a legitimate interest in the case and without becoming a party to the proceedings.
- The duration of trademark registration will change and from 1 September 2020, the protection period for trademarks will be ten years from the filing date. The duration of the registration of older trademarks will not change.
- Opposition proceedings will be clearer and can be deferred for at least two months if requested by both parties to negotiate a friendly settlement. Furthermore, it will be possible to request proof of genuine use as a defence in an opposition procedure.
- Revocation and invalidity procedures which now follow the same procedure will be divided. A trademark will be declared invalid with legal effect from the date of filing but revoked with legal effect from the date of application for revocation (or earlier if so requested).
- The rights conferred by a trademark are more clearly stated, i.e. the possibility to prevent the use of the sign as a trade or company name or in comparative advertising.