Act 45 (1997) deals with trademarks in Iceland. The law has been adapted from the EU Directive on Trademarks. Iceland is party to a protocol dated June 27 1989 of the Madrid Agreement concerning the International Registration of Marks.
Establishing trademark protection in Iceland requires either the registration of a trademark for goods or services, or the use of a trademark which is and has been used in the country for goods or services.
The unauthorized use of a commercial trademark is prohibited if it is used for the same or similar goods or services as are covered by the trademark right or there is a danger of confusion, including the conclusion that there is a connection between the marks.
In order to be registered, a trademark must:
- be suitable for distinguishing the goods of the proprietor from those of other parties;
- be suitable for registration (ie, it must not contain state emblems, be likely to cause confusion, or be contrary to law or public order); and
- not infringe the copyright of another person to such work or other intellectual property right.
Trademark protection commences either on the date of filing or on the commencement date for the right of priority. If the application of a trademark is filed within six months of the time first application was made for its registration in a country party to the Paris Convention for the Protection of Industrial Property (Paris Convention) or the agreement establishing the World Trade Organization (WTO), the application can, if such a request is filed, have the right of priority from the first date of application.
The Patent Office decides whether a trademark may be registered. A registration of a trademark may be opposed after its publication. Oppositions shall be filed in writing to the Patent Office within two months of the date of publication. The decisions and rulings by the Patent Office may be referred to an appeals committee within two months from the date of the Patent Office's decision. Should the parties involved seek a ruling from a court, they may initiate proceedings within three months of the date when the Patent Office or the appeal committee made its decision. Additionally, anyone with a legitimate interest may seek invalidation of a trademark registration by initiating court proceedings.
The protection of a registered trademark begins on the date the application was filed and lasts for 10 years from the date of registration.
An applicant who has neither activities in Iceland nor is a resident of a state which is a party to the Paris Convention or the WTO agreement must prove that he has obtained registration for a corresponding mark in his home country for the goods or services covered in his application, unless it involves an exception concerning reciprocity of protection.
The proprietor of a trademark who is not resident in Iceland must have an agent residing in Iceland.
Design protection is provided by Law 48 (1993). This entitles a designer, or his successor in title, to exclusive rights to a design if the design will be commercially exploited.
The act also offers protection to designs that are distinctive. This includes designs that have (i) not been made accessible to knowledgeable persons in the field concerned or, (ii) from the user's point of view, differs significantly from designs with which he is already familiar.
Protection of a design may be obtained by registration or by making the product, which is characterized by the design, accessible to the public.
A design enjoys protection without registration for two years if it has been made public by the designer or his successor in title. Protection for a registered design lasts for five years from the date of filing the application. Registration may be renewed for periods of five years, up to a total term of protection of 25 years.
A proprietor of design protection who is not a resident of Iceland, must appoint an agent resident in Iceland to represent him in all matters concerning application and registration.
Copyright protection is provided by Act 73 (1972). With the creation of the European Economic Area, Iceland has adopted various EU directives in the area of copyright, such as:
- the Council Directive for the protection of computer programs of May 14 1991 (91/250 EBE);
- the Council Directive of November 19 1992 on rental and lending rights and on certain rights related to copyright in the field of intellectual property (92/100/EBE);
- the Council Directive of September 27 1993 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission (90/83/EBE); and
- the Council Directive of October 29 1993 on harmonizing the term of protection of copyright and certain related rights (93/98/EBE).
The Icelandic Parliament is considering a proposed amendment to the Copyright Act, in order to adapt the Icelandic copyright laws to the Council and European Parliament Directive 96/9 on the legal protection of databases. Preparatory work is also underway to make Icelandic copyright laws even closer to Article 4 of Council Directive 92/100 on rental and lending rights and on certain rights related to copyright in the field of intellectual property.
Iceland has been a member of the WTO since the WTO agreement on January 1 1995. Many provisions of the Trade Related Intellectual Property agreement (TRIPS) have been incorporated in domestic law, although there is still room for improvement. For example, certain groups argue that the obligation of a court to listen to both sides of a case is not sufficiently provided for in current laws.
The level of copyright protection is relatively high in Iceland, in comparison to most EU countries. The recent amendments to the Copyright Act have provided greater protection for software manufacturers and significant results have been achieved in the fight against software piracy in recent years.
Act 17 (1991) governs patent protection. Amendments to the act have adopted all of Iceland's obligations pursuant to membership in the WTO, TRIPS and the agreement on the EEA. Iceland has been a party to the Paris Convention since 1995 and a party to the Budapest Convention (1977) on the Conservation of Micro-organisms.
Patents may be granted for all inventions that are susceptible to industrial application, and give the holder the exclusive right to exploit the invention commercially. Patents may only be granted for inventions that are new in relation to what was known before the filing date of the patent application and that also differ essentially from them. Innovations that are not considered to be inventions are those that exclusively concern:
- a discovery, scientific theory or mathematical method;
- an aesthetic creation;
- a scheme, rule or method for performing mental acts, playing games or for doing business;
- a program for a computer; and
- the presentation of information.
Methods for surgical or therapeutic or diagnostic methods practiced on humans or animals shall also not be regarded as inventions. This provision does not, however, prevent the granting of patents for products and equipment, including for substances and compositions of substances, for use in methods of this type. A patent cannot be granted for inventions whose use would be contrary to morality or public order, or plant or animal varieties or essentially biological processes for the production of plants or animals. However, patents may be granted for microbiological processes and products resulting from such processes.
Patents may only be granted upon the filing of a written application. Claim of priority can be made if the applicant or his predecessor in title have (within the 12 months prior to the filing date) disclosed the information in another application for a patent or for a patent, inventor's certificate or utility model protection in another country adhering to the Paris Convention.
The general rule is that from the date the patent is granted, the application shall be available to any person. Or, if a patent has not been granted, the relevant documents shall be available no later than 18 months from the date of filing, or from the day when priority is claimed.
A patent may be maintained for 20 years from the date of filing the patent application provided that a renewal fee is paid annually.
The Patent Authority is the sole determining body for the granting of patents. Anyone may file an opposition against a patent. An appeal against the final decision of the Patent Office concerning a patent application may be filed by the applicant to the Patent Board of Appeal not later than two months after the date on which the applicant was notified of the decision by the Patent Authority. Proceedings concerning decisions of the Patent Office may not be brought before the courts until the decision of the board of appeal has been given. However, if the decision of the board is to refuse an application for the patent or to declare a patent to be invalid, then proceedings shall be brought before the courts within two months from the date on which the concerned party was notified of the decision.
Tthe Patent Act has a provision that is compatible with Article 34 of TRIPS concerning a reversed burden of proof in the case of alleged process patent infringements. In addition the Patent Act provides supplementary protection in line with European Council Regulation 1768/1992 concerning a supplementary protection certificate for medicinal products. The term of protection may be extended five years beyond the ordinary protection term conferred on patents.
A proprietor of a patent who is not resident in Iceland must have an agent who resides in Iceland.
For further information on this topic please contact Hrobjartur Jonatansson at AM Praxis by telephone (+354 533 33 33) or by fax (+354 (533) 23 33) or by e-mail ([email protected]).
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