Be distinguishable, i.e. be able to distinguish the goods or services of its owner from the goods or services of others.
Be distinctive, i.e. be sufficiently distinctive so that consumers recognize it as offering a particular product or service.
The trademark cannot:
Describe the type of goods or services, their quantity, use, price, origin, characteristics, qualities etc.
Mislead consumers regarding the type of goods or services, their quantity, use, price, origin, characteristics, qualities etc.
Consist of a word or symbol that is commonly used in trade or in everyday speech.
Contain official symbols such as state flags or emblems, except as specifically permitted*.
Be confusingly similar to a previously registered trademark or company name in similar or connected operation.
Violate the copyrights of other parties.
*It is permitted to use the Icelandic flag in or combined with most trademarks. Should the intention be to register a trademark with the Icelandic Intellectual Property Office however, a special permission must be applied for with the Consumer Agency.
Check whether the trademark already exists
A search in our trademark database shows all currently registered trademarks in Iceland. Even though a trademark is not found in the database, it does not necessarily mean that it is not being used. It can therefore be useful to check whether the intended mark is being used as a company name or a domain name in order to know whether competitors are using the same or similar marks in their business.
The Icelandic Intellectual Property Office offers preliminary searches for a fee. It may also be helpful to seek the help of an intellectual property expert to assist with the search.
Classes of goods and services
When applying to register a trademark, a description must be provided of the goods or services for which the trademark is intended to be used. This description determines the scope of protection that the trademark provides. It is therefore very important to think carefully about what goods or services the trademark should protect because the selection can not be expanded once the application is filed.
What you should list
There are a total of 45 categories: 34 for goods and 11 for services. An extra fee is paid for each category in excess of one.
Questions to be considered before filing an application:
Where is the business income derived from?
What is the nature of the business?
What is the business known for doing by its customers/clients?
What products or services does (or will) the business provide?
Trademark scope is determined by ‘use’. If applied too widely, the business can be subject to ‘nonuse’ action which can lead to the goods and service scope to be narrowed. Furthermore, the business may not be able to enforce its rights to all the goods/services it has claimed if it does not use the mark on those goods/services.
An application for trademark protection can be submitted electronically (an Icelandic ID number is required) through our website, in paper form or by sending a PDF form, along with all supporting documents, by email to firstname.lastname@example.org. A separate application form must be filled out for each trademark. After an application is filed, only very limited changes are allowed.
An applicant who is not residing in Iceland must appoint an agent who is a resident in the European Economic Area, a member state of the European Free Trade Association (EFTA) or the Faroe Islands and is entitled and authorised to represent the case. This also applies to Icelanders who have a residence or principal place of business outside Iceland. A signed power of attorney must be presented. The agent can then sign the application on behalf of the proprietor.
The application will not be processed until the application fees have been paid. Application fees are non-refundable if the application is rejected.
If the trademark contains a figurative element an image containing the element shall be attached to the application in good quality. If the requested registration shall be in colour, the submitted image must also be in colour. The image is published after registration. As a result. Images may be submitted in 3-D in exchange for a fee.
Note that the trademark will be made public on the website of the Icelandic Intellectual Property Office soon after filing.
If there are no defects in the form of the application and the Icelandic Intellectual Property Office has no comments on the registrability of the mark, the registration process will take approximately 4-8 weeks. When the trademark has been registered, it is published in the ELS Gazette on the website of the Icelandic Intellectual Property Office. The Gazette is published on the 15th day of each month.
Anyone may oppose the registration within two months of the publication of the registered trademark in the ELS Gazette. The opposition shall be in writing and include the reasoning for the opposition, and sent to the Icelandic Intellectual Property Office. If a trademark is opposed, the proprietor is given the opportunity to submit his or her reasoning for the registration. When both parties have submitted their reasoning in the case, the Icelandic Intellectual Property Office will make a ruling on the matter. The parties to the case may subsequently refer the decision of the Icelandic Intellectual Property Office to the Appeals Committee for Intellectual Rights in the Field of Industry and/or refer the case to a court of law.
If a registration application fails to meet the requirements of the Trademarks Act, the Icelandic Intellectual Property Office will send the applicant notification thereof in writing and grant the applicant a period of grace to submit comments. If the Office does not receive a reply within the deadline, the application will be refused. If however, the Office receives a reply, the application will be subject to reassessment. If all requirements are met, the trademark will be accepted for registration and publication. If the trademark still does not meet the requirements of the Trademarks Act, the applicant will be notified thereof again and given a second opportunity to submit comments. If the trademark still not in compliance with the Trademark Act, the Icelandic Intellectual Property Office will in most cases make a final decision of refusal. In exceptional cases, the Office may grant the applicant a third opportunity to comment before a final decision is made.
The applicant may subsequently refer to the decision of the Icelandic Intellectual Property Office to the Appeals Committee for Intellectual Rights in the Field of Industry and/or refer the case to a court of law.
An Icelandic trademark only provides protection within Iceland. If use of the trademark is planned overseas, it is advisable to apply for trademark registration in the countries where the intended use will take place.
There are three ways to apply for an international trademark registration:
Apply directly to the national office of each country
Apply using the Madrid Protocol
Apply for an EU trademark
Applying for trademark registration in each individual country can be practical if use of the trademark is only planned in a few countries. It can however prove challenging to manage different deadlines, language requirements and currencies.
The Madrid Protocol
The Madrid Protocol allows trademark owners to apply for protection in several or all of the member states of the World Intellectual Property Organization - WIPO, with a single application. The member states currently number up to 122 countries and include the European Union, China and the USA.
An international application must be based on a national application that will be registered later, or on a pre-existing Icelandic registration. The applicant must therefore submit an application for registration in Iceland to the Icelandic Intellectual Property Office, before or at the same time as the international application is submitted. The mark must be identical in both cases and the goods and service list may not be more extensive than indicated in the national application.
An international trademark application must be filed through the Office of Origin (where the basic trademark was filed). An application based on an Icelandic registration must therefore be filed through Icelandic Intellectual Property Office. Once the ISIPO has determined that the application meets Icelandic registration requirements, the designated countries make separate decisions on the registrability of the application in each country. The refusal of registration by one designated country does not affect the application process in other countries.
If a subsequent application is made in another country based on the Icelandic trademark registration within 6 months from the date of filing it will receive the same filing date as the original Icelandic application and thus have priority over other applications that might have been filed in the meantime.
A fee is paid for each designated country. Handling fees shall be paid to the Icelandic Intellectual Property Office in accordance with the fee list, while other fees for the application shall be paid directly to WIPO.
An EU trademark provides trademark protection in all member states of the European Union via a single application. However, the trademark can be rejected in each individual member state. If rejected in one state, the registration will fail in all EU countries. Should this occur you do nonetheless have the option to convert your application into a national application to individual EU countries.
When applying for a EU trademark, an application must be sent to the European Union Intellectual Property Office - EUIPO. The application cost varies depending on how many classes of goods and/or services are included in the application. Further information on EU trademarks, the application process and costs of application can be found on the website of EUIPO.