A trademark represents a business identity in the marketplace. It may indicate a certain quality, reputation and goodwill and can therefore be particularly valuable when marketing goods and services.
A trademark can consist of:
Word marks such as Microsoft or CHANEL.
Figurative marks such as the apple from Apple or the curve from Nike.
Combined marks containing words and figurative elements, such as the golden McDonald's arches with the caption "I'm loving it" underneath.
Slogans such as "Just do it" or "It's finger lickin' good".
Three dimensional marks such as the shape of a tool box.
Numbers and letters such as VW and 21.
Why register a trademark?
A registration of a trademark confers an exclusive right to use the mark in business for specific goods and/or services and allows the owner therefore to prevent others from using the same or similar trademarks in business for identical or similar goods and services.
Trademark right can be established either by registration or by use. Proving establishment of a trademark right by use can be difficult and requires extensive data that can confirm the use of the mark as a trademark for a particular product/service. However, by registering a trademark the exclusive right has been documented and confirmed which strengthens the position of the trademark owner by:
putting him in a better position to defend his rights
providing a sound basis for negotiating finance for development costs and entering into licensing and sales agreements
providing business tools that can help to attract investors, enter new markets and find business partners.
helping to prevent conflicts and provide evidence in conflict
Keep in mind that the exclusive right provided by trademarks applies only to use in business, i.e. use of the trademark on the product itself, packaging, in advertising, in business documents etc. The right does therefore not prevent private use.
Classes of goods and services
When applying for a trademark registration it is necessary to choose goods and/or services for which the trademark should be registered. This selection of goods and services defines the scope of the exclusive right that a trademark contains. It is therefore important to choose the goods and services for which the trademark is being used or will be used in the near future. Further information regarding the goods and service classification can be found here.
Protection time and cost
Registration lasts for a period of ten years from the filing date of the application and may be renewed indefinitely upon payment of a fee. If registration is not renewed, the registration will expire.
How much does a trademark application cost?
Application fees must be paid when applications are filed. The employees of the Icelandic Intellectual Property Office provide applicants with general information on the completion of applications.
Protection in Iceland or internationally
Protection in Iceland or internationally
It is advisable to have a trademark registration in every country where you intend to exploit your trademark commercially. However, it will also be more expensive if a trademark is protected in many countries. The prices depend on the price list in each country.
What are collective marks?
Collective marks are usually defined as signs which distinguish the geographical origin, material, mode of manufacture or other common characteristics of goods or services of different enterprises using the collective mark. The owner may be either an association of which those enterprises are members or any other entity, including a public institution or a cooperative.
By registering collective marks, companies or organisations can obtain proprietary rights for their members to use a common identifier for goods or services for commercial purposes. Moreover, authorities, establishments, associations or unions may acquire proprietary rights to a trademark used for goods or services to which controls or standards apply.
Applying for the registration of a collective mark
Collective marks may be filed with the ISIPO. The same form is used for the registration of trademarks and collective marks. Specific mention must be made on the form that the application is for the registration of a collective mark. Collective marks listed in the Trademarks Registry must meet the same registration requirements as trademarks. In addition, the rules that apply to the use of the mark must be attached to the application. The rules shall state the following:
Who is authorised to use the mark and what conditions are set for such authorisation.
What would be the consequences of unlawful use.
What rights and duties the owner of the mark has vis-à-vis those using the mark in an unlawful manner.
International registration of collective trademarks
The same applies to the registration system of collective marks as applies to trademarks. The applicant must file an application for registration in Iceland before or at the same time as the international application is filed. The mark must be identical in both cases and the list of goods and services may not be more extensive than indicated in the national application.