Intellectual Property Rights in Iceland becomes more international

By Ólafur Ragnarsson

Posted: 1st December 2014 08:37

International co-operation
 
Iceland is a member of the World Intellectual Property Organization (WIPO) and a party to most major international intellectual property (IP) protection agreements.  Intellectual Property Rights (IPR) and it´s protection are substantially dependent on international co-operation.  Iceland is a party to a number of international agreements, including:
 
The Paris Convention for the Protection of Industrial Property, the Berne Convention for the Protection of Literacy and Artistic Works,the Trade Mark Protocol Relating to the Madrid Agreement, the Patent Cooperation Treaty (PCT), the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs and the European Patent Convention (EPC).
 
Moreover, Iceland, as a member of the World Trade Organisation (WTO), has adapted Icelandic legislation to the provisions of TRIPS (Trade-Related Aspects of IP Rights).  Furthermore, the Agreement on the European Economic Area (EEA), together with additions, has led to several legislative amendments in Iceland to accord with the directives and regulations of the European Union (EU).
 
The EEA is an Agreement between two bodies the European Free Trade Association (EFTA) on one hand and the EU on the other hand.  EFTA consists of only four countries Switzerland (Switzerland is though not a member of the EEA), Norway, Iceland and Lichtenstein and EU consists of 28 countries. 
 
Most important IP developments in the Icelandic jurisdiction
Changes to the Trademark Act
 
In June 2012 invalidation of registered trademarks due to non-use became possible through administrative decision.  Another notable change is that a trademark cannot be registered if it is confusingly similar to a mark that has been in use in another country, provided that the application is in the same or similar class of goods or services as the foreign mark and the applicant is aware of or should have been aware of the foreign mark.
 
Representation
 
The changes to the Icelandic law allow foreign agents to represent IPR owners before the Icelandic authorities, but they must reside within the EU, EEA.  However, all communication between representatives and the Icelandic Patent Office (IPO) must be in Icelandic.
 
Obtaining IP protection in Iceland
 
Patents

Definition and rights
 
Patents protect the technical realisation of an idea, such as equipment and products, as well as methods or applications.  Basic requirements for granting a patent for an invention are that it be new, inventive and capable of industrial application.  Patents granted by the IPO protect inventions for up to 20 years in Iceland.  The exclusive rights established in patent legislation entitle the proprietor to prohibit others from manufacturing, importing and selling an invention protected by a patent.
 
Trademarks

Definition use and rights
 
Trademarks are used to label goods and services.  Trademarks may be any type of visible sign used to differentiate the goods or services of one party from the goods or services of other parties.  Moreover, trademarks are often used as company names and domain names. 
 
The rights established by trademarks legislation entitle a trademark proprietor to exclusive rights to use the trademark in Iceland and, as a result, the right to prohibit others from using, for commercial purposes, marks that are identical or similar to its own trademark.
 
Designs

Definitions and rights
 
Design is defined by the visible appearance of a product.  Even if a product has a technical function, only its appearance is protected by design protection.  The goods can be handmade or mass-produced.  Examples of goods that can enjoy design protection include furniture, clothing, packaging, machinery, tools, foodstuffs and jewellery.  A product need not be in three-dimensional form to enjoy protection.  It can be two-dimensional, such as a screen display on a computer, a graphic symbol, or a decoration on another product, such as wallpaper.  The more original and innovative the design is, the greater the likelihood it can be protected.
 
Registering a design grants the owner of the registration exclusive rights to utilise that design and the right to ban others from utilising the design in question.  Design rights are obtainable only through registration. 
 
Copyright
 
Copyright has become increasingly of immediate interest due to the new digital technology which has resulted in especially films and music being distributed differently than before. 

Customs control
 
Pirate copying of goods and illegal parallel import is an increasing challenge.  IP attorneys assist with solutions to prevent import and sale of such goods, among other things by the assistance of custom control and handling legal conflicts.  There exists international network which makes it possible to meet such problems abroad.
 
Monetising, licensing IPR
 
A license includes a permission to use an intellectual property right (IPR) under defined condition.  A license denotes only a permission to use within defined time, context, market line, or territory.  While an assignment denotes the transfer of ownership (title).  Accordingly an assignment conveys ownership, ownership remains with the licensor.
 
Patent licensing in Iceland
 
It is not compulsory to record the granted license in the Register of Patents.  In practice the Patent Office recommends strongly to register always grant of license.  Lack of recordation in the Register of Patents can under special circumstances cause loose of rights of the licensor.
 
Trademark licensing in Iceland
 
The trademark owner should exercise control over the nature and quality of the goods or services sold by the licensee under the licensed mark.  Licensing of a mark without adequate quality control is “naked licensing,” which raises the risk that the public will be deceived into thinking that the goods or service provided by the uncontrolled licensee are of the same general nature and quality as those previously provided or as those provided by other licensees.  The proprietor of a trade mark may grant others authorisation to use the mark commercially (a license).  The proprietor of a trade mark or licensee may request that a license be entered in the Register of Trade Marks. 
 
Author Ólafur Ragnarsson, Patice IP Legal
 
Ólafur Ragnarsson graduated 1967 from the Law Faculty of University of Iceland.  Postgraduate studies in the University of Copenhagen and London. 
 
Mr. Ragnarsson was admitted to the Icelandic Bar Association in 1968.  He has been a Supreme Court Barrister from 1971.  Mr. Ragnarsson has practiced intellectual property law exclusively from 1985.  He established the law firm Patice Legal in 1985.  Mr. Ragnarsson was the chairman of the Association of Icelandic Patent and Trademark Attorneys from 1985 to 2000.  He has been a European Patent Attorney from 2005. 
 
Ólafur Ragnarsson is an attorney at law and the head of Patice IP Legal.  He can be contacted at olafur@patice.com

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