Renewal

Protection of a registered Icelandic trademark commences on the day that an application is filed and is valid for 10 years from the date of registration, after which the registration may be renewed for 10 years at a time as often as desired. A trademark registration will expire if it is not renewed. 

An application for renewal may be submitted to the ISIPO up to 6 months prior to, and no later than 6 months after, the end of the registration period. The renewal fee varies based on the number of goods and/or service classes included in the application.

Note that the only amendments to a trademark registration that are permitted during the renewal process is reducing the scope of goods and/or services for which the trademark is registered, e.g. removing a class or deleting some of the goods and/or services within a class. Nonetheless, owners of trademarks applied for before January 1, 2014 who chose a heading of a product and/or service category for their registration can amend their listing. Instead of the heading, it is thus possible to make the registration more specific by choosing items from within the particular category for which the mark is to be renewed. This amendment is only allowed when the trademark is renewed for the first time. 

 Renewal application     Fees

Non-Use

If a trademark has not been used five years after the date of registration or for five consecutive years, the registration can be removed from the trademark registrar in whole or in part by a request to the ISIPO or national courts. If another party wishes to register a similar trademark, for example for the same goods as an already registered trademark which has not been used for the goods in question, said party can request that the registration is removed to the extent needed so the new trademark may be accepted for registration.

Losing distinctiveness

A trademark can also be cancelled if, because of the use made of it, it becomes the common name for a good or service, or if it becomes misleading as to the nature, quality or geographical origin of the goods and services for which it is registered.

The request for removal shall be in writing, include the reasoning for the request, and sent to the Icelandic Intellectual Property Office or a national court. If a request for removal is filed, the proprietor is given the opportunity to submit his or her reasoning against the removal. When both parties have submitted their reasoning in the case, the Icelandic Intellectual Property Office or court 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.

It is important to be vigilant and monitor the market, use the internet and follow the activities of competitors to make sure that a registered right is not being infringed. It is also possible to solicit the assistance of a trademark specialist, many of whom offer trademark monitoring. Keep in mind that the ISIPO is responsible for registering trademarks and collective marks but is not an enforcement agency.

If a trademark owner discovers that others are using a trademark that is similar to his, for the same or similar goods or services, and suspects that it is an infringement of his rights, he needs to consider sending a 'cease and desist letter', informing his competitor about the conflict. The letter will make the competitor officially aware of the preexisting right and lets them know that if they continue to disregard the trademark owners rights they might face further action. Sometimes a settlement may be negotiated. If attempts to warn or negotiate with the alleged infringer fail, other legal measures before the courts are available to prevent the illegal use of a trademark. An attorney who specializes in intellectual property rights should be consulted in these cases.

If a registered company name can easily be confused with a trademark, it is possible to oppose the registration by requesting a review of the registered company name to the Company Register, which handles registrations of company names and is operated by the Director of Internal Revenue. This option is available for an indefinite period. Furthermore, being an administrative decision, the registration of a company name can be appealed to the Ministry of Industries and Innovation to have it repealed or amended. An appeal to the Ministry must be made within three months from the date of notification of the administrative decision unless otherwise provided by law. Moreover, it is possible to bring a case before the court within 6 months from the date that a notice of the company registration was published in the Legal Gazette.

If an infringement involves an unregistered trademark it is possible to request that the Consumer Agency give a decision on whether the use of the unregistered trademark violates good business practices or is unfavourable to consumer interests. 

 Trademark specialists     The Company Register     Consumer Agency

Anyone may oppose a registration within two months of the publication of the registered trademark in the ELS Gazette on the website of the Icelandic Intellectual Property Office.

What can be the grounds for an opposition?

Various reasons can be the cause for opposition such as that the trademark:

  • is liable to be confused with the rights of others 
  • lacks distinctive character 
  • contravenes the law, public order or morals
  • is likely to mislead 
  • contains a coat of arms or other symbols/flags without authorisation from the proper authority 
  • contains a geographical origin for wine or spirits 
  • has an incorrect holder
How to oppose a trademark

An opposition shall be in writing and sent to the Icelandic Intellectual Property Office to the email address: isipo@isipo.is. The request must contain:

  • the name and address of the party objecting and the name and address of the attorney if one is being used
  • the registration number of the trademark in question
  • the reasoning for the request
  • information about which goods and services the objection applies to, or which goods and services are unaffected by the opposition if only partial cancellation of the registration is requested
  • necessary documentation in support of the request
  • power of attorney if an attorney is used, if the attorney is not a lawyer or trainee lawyer

Furthermore, a fee must be paid to the ISIPO.

Opposition process

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 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. The opposition may lead to the registration being wholly or partially cancelled.

What can be changed after registration
  • Very minor changes may be accepted to the trademark itself after registration if they do not affect the identity of the trademark.
  • Basic information such as ownership, address of the trademark owner, designated agent etc. can be changed.
  • It is possible to send an updated image to the ISIPO that shows a figurative element in better quality and/or resolution.
  • The list of goods and/or services covered by a trademark registration can be restricted.
  • Some goods and/or service classes covered by a trademark registration can be removed.
  • A trademark registration can be revoked as a whole.
  • A trademark can be out-licensed, so that others can use it commercially, usually for a fee. In that way, new markets can be reached and others handle marketing and sales. It is widely used in connection with films and television series, where familiar characters and logos are used on "spin-off" products such as toys, clothing, bed linen, etc.
  • A trademark can be licensed in by paying for the rights to use others' marks.
What cannot be changed after registration
  • In general it is not allowed to change the trademark itself, e.g. the figurative element or spelling of the word element. However, minor changes may be permitted in exceptional cases. 
  • It is not possible to add further goods or services once a trademark application has been filed. In such cases a new application must be submitted.
  • A collective mark cannot be changed into a trademark.
  • A trademark cannot be changed into a collective mark. 
Notifications

It is important to make sure that the trademark register displays correct information. Therefore, the ISIPO must be notified via email to isipo@isipo.is if for example: 

  • a trademark changes ownership (should include supporting documents such as deed of assignment)
  • the name/address of the trademark owner changes (must include the previous and the new address/name)
  • if the trademark is mortgaged/licensed (must include supporting documents)
  • if rules regarding the use of a collective mark are changed (must include supporting documents)
  • if the agent is changed (must include the name, address and contact info of the previous and the new agent)
  • if changes are made to the list of goods and/or services
  • if the trademark is revoked.

Documents confirming the amendments must be included in the notification. Some amendments will only be processed for payment of a fee. 

 Fees

Renewal

An international registration, like the national registration, is valid for 10 years after which the registration can be renewed for 10 years at a time, as often as the owner wishes.

The Madrid Protocol 

An international registration via the Madrid Protocol is dependent on the national basic application or registration for 5 years. This means that if the Icelandic application is not registered, or the registration is deleted before five years have passed, the international registration will also be deleted. It may therefore be worthwhile to wait until the Icelandic application has been processed before filing an international application. It is nonetheless advisable to apply within 6 months from filing the national basic application and by doing so taking advantage of the priority rule.

A renewal application can be submitted electronically on the WIPO website. It is also possible to fill out the International Registration Renewal Application (MM11) and mail it to WIPO.

 Renewal application     Fees

EU trademark

The European Union Intellectual Property Office (EUIPO) will generally inform trademark owners six months before expiry that a trademark is due for renewal. Any other person holding a right to an EU trade mark, e.g. a licensee, will also be informed by the Office.

The renewal should be done and the renewal fee must be paid within the six months preceding the mark's expiry date. The form may be submitted right up until the expiry of the registration. If the time limit is not kept but the owner still wishes to renew the mark, it is still possible to do so for six months after the expiry date, but there is a 25% surcharge.

Online renewal is the most efficient and cheapest method. However, it is also possible to fill in an renewal application in paper form which can be sent by post or courier. 

 Renewal application     Fees

Independent registrations in other countries

A renewal application must be submitted individually to the registration authority in each country. Fees for renewing trademark registrations vary from country to country. To find out how much you have to pay in other countries, contact an Intellectual Property specialist or the IP office in the country in question.

Non-Use

If a trademark has not been used five years after the date of registration or for five consecutive years, the registration can be removed from the trademark registrar in whole or in part by a request to the registration authority in question or courts. If another party wishes to register a similar trademark, for example for the same goods as an already registered trademark which has not been used for the goods in question, said party can request that the registration is removed to the extent needed so the new trademark may be accepted for registration.

Losing distinctiveness

A trademark can also be cancelled if, because of the use made of it, it becomes the common name for a good or service, or if it becomes misleading as to the nature, quality or geographical origin of the goods and services for which it is registered.

The request for removal shall be in writing, include the reasoning for the request, and sent to the registration authority in question or courts. If a request for removal is filed, the proprietor is given the opportunity to submit his or her reasoning against the removal. When both parties have submitted their reasoning in the case, a ruling will be made on the matter. The parties to the case may subsequently refer the decision to an Appeals Committee and/or refer the case to a court of law.

It is important to be vigilant and monitor the market, use the internet and follow the activities of competitors to make sure that a registered right is not being infringed. It is also possible to solicit the assistance of a trademark specialist, many of whom offer trademark monitoring. Keep in mind that the registration authority is responsible only for registering trademarks and collective marks but is not an enforcement agency.

If a trademark owner discovers that others are using a trademark that is similar to his, for the same or similar goods or services, and suspects that it is an infringement of his rights, he needs to consider sending a 'cease and desist letter', informing his competitor about the conflict. The letter will make the competitor officially aware of the preexisting right and lets them know that if they continue to disregard the trademark owners rights they might face further action. Sometimes a settlement may be negotiated. If attempts to warn or negotiate with the alleged infringer fail, other legal measures before the courts are available to prevent the illegal use of a trademark. An attorney who specializes in intellectual property rights should be consulted in these cases.

A trademark may be opposed once it has been accepted for registration/protection. Opposition deadlines, procedures and costs vary based on the type and location of registration. When considering or confronted by an opposition it is advisable to seek assistance from an IP specialist. 

What can be the grounds for an opposition?

Various reasons can be the cause for an opposition such as that the trademark:

  • is liable to be confused with the rights of others 
  • lacks distinctive character 
  • contravenes law, public order or morals
  • is likely to mislead 
  • contains coat of arms or other symbols/flag without authorisation from the proper authority 
  • contains a geographical origin for wine or spirits 
  • has an incorrect holder

 Trademark specialists

The Madrid Protocol

Changes to a registered international trademark via the Madrid Protocol are sent to WIPO on special forms available on the WIPO website here. Most of these forms may be submitted to the ISIPO which forwards them to WIPO, which then notifies the states where the registration is in effect. 

Note that you cannot expand or broaden the list of goods and services after you have submitted your international application, not even to cover goods and services mentioned in the basic mark. If you want to broaden your list after submitting Form MM2, you will need to file a new international application.

Note that if new markets open up to the owner of an international listing, additional countries/regions can be added to the listing to which the trademark right shall apply. The new countries/regions are thus added to the group of original nominated countries under the same international registration number. As with the original application process, the new countries make independent decisions on the eligibility of the trademark. A subsequent designation application can be submitted electronically on the WIPO website. It is also possible to fill out the application (MM4) and mail it to WIPO or submit the form to the ISIPO, which will forward it to WIPO.

Fees for changing trademark registrations vary from country to country. To find out how much you have to pay in other countries, contact an Intellectual Property specialist or the IP office in the country in question.

 Forms     Fees

EU trademarks

Changes to a registered EU trademark can be notified online via a user area which is can be accessed to after an application has been filed. Just access the User Area and use the options menu to make the appropriate changes to the personal details.

 Forms     Fees

Independent registrations in other countries

Notifications of changes must be submitted individually to the registration authority in each country. Fees for changing trademark registrations vary from country to country. To find out how much you have to pay in other countries, contact an Intellectual Property specialist or the IP office in the country in question.

 Trademark specialists