WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACI6N MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects 
of Intellectual Property Rights IPlNlllISLlTlllRev.l 
20 February 1998 
(98-0609) 
Original: English! 
anglaisl 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND 
REGULATIONS NOTIFIED UNDER ARTICLE 63.2 
OF THE AGREEMENT 
Iceland 
Revision 
By means of a communication from its Permanent Mission, dated 13 October 1997, Iceland 
has notified the Icelandic Trademarks Act No. 45 of22 May 1997 under Article 63.2 of the Agreement, 
as reproduced in the present document'. The Act replaces the Trade Marks Act No. 47/1968 as 
previously notified by Iceland and contained in document IP/N/1/ISLlT/1. 
Conseil des aspects des droits de propriete 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA 
PROPRIETE INTELLECTUELLE NOTIFIEES AU TITRE 
DE L' ARTICLE 63:2 DE L' ACCORD 
Islande 
Revision 
Par une communication de la Mission permanente de l'Islande, datee du 13 octobre 1997, 
l'Islande a notifie le texte de la Loi n· 45 du 22 mai 1997 sur les marques, reproduit' dans le present 
document, au titre de 1 'article 63:2 de l'Accord. Cette loi remplace la Loin· 47/1968 sur les marques, 
precedemment notifiee par l'Islande et dont le texte est reproduit dans le document IP/N/1IISL/T/1. 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA PROPIEDAD 
INTELECTUAL NOTIFICADOS EN VIRTUD DEL pARRAFO 2 DEL 
ARTICULO 63 DEL ACUERDO 
Islandia 
Revisi6n 
En el presente documento se reproduce' el texto de la Ley de Marcas de Fabrica 0 de Comercio 
N° 45, de 22 de mayo de 1997, que ha sido notificada por Islandia, en virtud de los dispuesto en el 
parrafo 2 del articulo 63 del Acuerdo, mediante una comunicaci6n de su Misi6n Permanente, de 
fecha 13 de octubre de 1997. Esa Ley sustituye a la Ley de Marcas de Fabrica y de Comercio 
N° 47/1968 notificada anteriormente por Islandia y que figura en el documento IP/N/lIISLlT/l. 
'English only/anglais seulement.lEn ingles solamente. IP/NIlIISLlT/1/Rev.1 
Page 2 
22 May 1997 
THE PRESIDENT OF ICELAND Trade Marks Act 
makes known herewith: Althingi has adopted this Act and I have ratified it with my 
consent. 
CHAPTER I 
General provisions 
Article 1 
Individuals and legal entities may acquire exclusive right to a trade mark in 
accordance with the provisions of this Act. Trade marks are distinctive 
identifications for goods or services for commercial use. 
Article 2 
Trade marks may be any sort of visible signs suited to distinguish the goods 
or services of one party from the goods or services of others, such as: 
1. words or word combinations, including slogans, personal names, names of 
enterprises or real property; 
2. letters and numerals; 
3. illustrations and drawings; 
4. the appearance, equipment or packaging of goods. 
A trade mark right cannot be acquired for a sign which shows exclusively a 
shape which is dictated by the goods themselves, a shape which is necessary due to 
the technical role of the product or which is intended in some manner for a purpose 
other than identification. 
Article 3 
Trade mark right may be established by: 
1. the registration of a trade mark for goods or services in accordance with the 
provisions of this Act, or 
2. the use of a trade mark which is and has been used in this country for goods 
or services. 
A trade mark which is deemed not to fulfil the requirements of this Act for No. 45 IP/N/lIISLlT IlIRev.1 
Page 3 
registration cannot acquire trade mark right by being taken into use. A trade mark 
which does not fulfil the requirements of the Act for distinctiveness at the 
commencement of use may, however, establish a trade mark right if the mark 
acquires distinctiveness through use. 
Article 4 
Trade mark right prevents anyone other than the proprietor of the trade mark 
from using commercially a sign which is the same a's or similar to his trade mark if: 
1. it is used for the same or similar goods or services as are covered by the trade 
mark right and 
2. there is a danger of confusion, including the conclusion that there is a 
connection between the marks. 
Despite the provisions of the first paragraph concerning the same or similar 
goods and services, the proprietor of a trade mark may also prohibit its use for other 
goods and services if the trade mark is well known in this country and the use 
would comprise misuse or lessen the distinctive nature of the characteristics or 
reputation of the known mark. 
The mark may not be referred to in selling spare parts or accessories for a 
product without the consent of the proprietor, if this is done in such manner that it 
could be assumed that the accessories originated with the proprietor or that he had 
authorised the use of the mark. 
Article 5 
Commercial use of a trade mark includes, for instance: 
1. placing a mark on goods or their packaging, 
2. offering for sale, placing on the market or preparing to place on the market, 
goods or services identified with the mark, 
3. importing or exporting goods or services identified with the mark, 
4. using the mark in advertisements, letterheads or in other similar fashion. 
Article 6 
Provided that the use is in accordance with honest business practice, the 
proprietor of a trade mark may not prohibit others from using in trade or business: 
1. his own name, name of real property or of his commercial operations; 
2. descriptions of a type of goods or services, their condition, quantity, use, 
price, origin, when produced or offered to the public, or of other characteris­
tics of goods or services. IP/N/1/ISLlT/1/Rev.l 
Page 4 
If the owner of a trade mark has placed on the market goods or services which 
enjoy trade mark right or authorised such, he may not subsequently hamper the use, 
sale, rental, import, export or other distribution of the goods or services. 
Article 7 
If two or more pmties individually claim a trade mark right to identifications 
which are confusingly similar an earlier right shall take priority over a later one 
unless otherwise implied by provisions below. 
The protection for a registered trade mark commences on the date of filing or 
the original date of priority, cf. Articles 17 and 18. 
Alticle 8 
A later right to a registered trade mark may enjoy protection parallel to the right 
of an earlier mark, even though the marks may be confusingly similar, if an 
application for registration was filed in good faith and the proprietor of the earlier 
trade mark, despite knowledge of the later mark, has raised no opposition to its use 
in this country for a continuous five-year period from the date of registration. 
Article 9 
A later right to a trade mark may also enjoy protection parallel to the right of an 
earlier mark, even though the marks may be confusingly similar, if the proprietor of 
the earlier trade mark has not, within a reasonable time, taken the necessary steps to 
prevent the use of the later mark. 
Article 10 
In the instances referred to in Articles 8 and 9 the Courts may, should this be 
considered reasonable, decide that one or both of the marks may only be used in a 
special manner, e.g. that they be of a certain type, include an additional place name 
or be distinguished by other means. 
Article 11 
Upon the request of the proprietor of a registered trade mark, authors and 
publishers of dictionaries, reference works, school books and other specialised 
literature, are obliged to ensure that the mark is not used without express mention 
being made of the fact that this is a registered trade mark. 
Anyone failing to fulfil the obligation in the first paragraph must pay for a cor­
rection to be published in a manner deemed reasonable. CHAPTER II 
Registration of trade marks 
Article 12 IP/NIlIISLlT/1/Rev.l 
Page 5 
An application for the registration of a trade mark must be filed in writing to 
the Icelandic Patent Office, which handles the registration of trade marks and 
maintains the Trade Mark Register. The application shall specify what is the mark, 
including an illustration if appropriate, and for what goods or services registration is 
requested. It shall also give the name of the individual or enterprise applying and be 
accompanied by the prescribed fee. In addition the application shall be in accordance 
with the provisions of a Regulation, cf. Article 65. 
Article 13 
It is a condition for registration that a trade mark be suitable for distinguishing 
the goods of the proprietor from those of other parties. A mark which indicates 
exclusively, or with only minor alterations or additions, the type of product, 
condition, quantity, use, price, origin or when it was produced, shall not be deemed 
to possess sufficiently distinctive characteristics. The same shall apply to a sign or 
word combination which is common in trade or is used in everyday speech. 
In order to determine whether a mark has sufficiently distinctive characteristics 
all circumstances must be considered, in particular how long and to what extent the 
mark has been in use. 
Article 14 
A trade mark may not be registered: 
1. if it contains, without authorisation, state emblems, official international 
symbols, emblems of Icelandic municipalities, official inspection or quality 
signs, specific names of these identifications of anything else likely to be 
confused with the above-mentioned symbols and emblems; the prohibition 
shall include only official inspection and quality signs if registration of the 
mark is sought for the same or similar products as those for which the above­
mentioned signs and symbols are used; 
2. if the mark is liable to cause confusion, for instance, as to the type of product, 
condition or origin. 
3. if the mark is contrary to law or public order or likely to cause offence, 
4., if the mark contains anything which may give cause to conclude that it is the 
name of an active commercial operation or the name or portrait of another 
person, providing this does not involve individuals long dead or if the mark 
includes a distinctive name of real property or an illustration of it, IP/N/1/ISLlT/1/Rev.l 
Page 6 
5. if the mark contains anything which may cause it to be interpreted as the 
distinctive title of a protected literary or artistic work or if it infringes the 
copyright of another person to such work or other intellectual property right, 
6. if the mark is liable to be confused with a trade mark which has been 
registered in this country or which has been in use here when the application 
for registration was filed and is still in use here, 
7. if the mark is liable to be confused with a mark which may be considered to 
have been well known In this country at the time the application for 
registration was filed, 
8. if the mark is liable to be confused with a trade mark which has been 
internationally registered, provided that this registration was valid in this 
country before the application was filed, cf. Article 59. 
Notwithstanding the provisions of Articles 4-8, a mark may be registered if 
the consent of the trade mark proprietor or other rightholder has been given. 
A trade mark for wines and spirits which implies a geographical name for 
wine or spirits may not be registered unless the product originates at the location in 
question. 
Article 15 
The trade mark right acquired through registration does not cover such 
elements of the mark which could not be registered separately. 
Should there be reason to expect that the registration of a mark could cause 
doubt as to the scope of the trade mark right, specific exclusion from protection of 
individual elements of it may be made at the time of registration 
Should that element of the mark which has been excluded from protection 
subsequently prove eligible for registration such elements of the mark, or the mark 
as a whole, may be registered without the restrictions referred to in the second 
paragraph. 
Article 16 
A trade mark shall be registered for a specific class or classes of goods or 
services. Marks may not be registered for an entire class or classes without 
specifying the goods or services for which trade mark registration is requested. 
The classification of goods and services shall be detennined by the Minister 
and advertised. 
Article 17 
If an application for the registration of a trade mark is filed in this country 
within six months of the time first application was made for its registration in a IP/N/1/ISLlT/l/Rev.l 
Page 7 
country party to the Paris Convention for the Protection of Industrial Property or the 
agreement on the establishment of the World Trade Organisation (WTO), this 
application shall have the right of priority from the first date of application if a 
request is filed to this effect. An application having the right of priority is 
considered, with regard to later occurrences such as applications from other parties 
for registration or use of the mark, to have been filed simultaneously with the filing 
of the application for the mark abroad. 
In the case of reciprocal legal protection,' the Minister may decide in a 
Regulation that the provisions of the first paragraph shall also apply to applications 
filed in countries which are not parties to the Paris Convention or agreement on the 
founding of the WTO. 
Article 18 
If application is made for the registration of a trade mark within six months 
from the first use of the mark for goods or services displayed at an official 
exhibition or at an international exhibition in this country, the mark shall be 
considered, with respect to later occurrences such as applications from other parties 
for registration or use of the mark by others, to have been filed simultaneously with 
the presentation of the mark at the exhibition. 
Article 19 
If an application for the registration of a trade mark does not comply with legal 
provisions or if the Patent Office is of the opinion that other barriers should cause 
the rejection of the registration, the applicant shall be sent a reasoned statement of 
refusal and a time limit set within which he may explain his case. Upon the expiry of 
this period the Patent Office will re-examine its position towards the application. 
Article 20 
Should anyone claim to the Patent Office that he is the proprietor of a 
registered trade mark, or a trade mark for which registration has been sought, the 
Office may recommend that the party concerned institute proceedings within a 
specified time limit to establish this. In this recommendation mention shall be made 
of the fact that failure to institute proceedings may result in the Patent Office 
ignoring his claims. 
If legal proceedings are initiated to establish the right to a trade mark, 
processing by the Patent Office may be postponed. IP/N/1/ISLlT/1/Rev.l 
Page 8 
Article 21 
If an application for the registration of a trade mark is deemed to fulfil the 
requirements for registration the mark shall be registered and published. The 
published announcement shall include the principal information concerning the 
registration and an illustration of the mark if appropriate. Trade marks shall be 
published in a special publication of the Patent Office (the Patent Gazette, ELS­
tCindi). 
Article 22 
The registration of a trade mark may be opposed after its publication. 
Oppositions shall be filed in writing to the Patent Office within two months of the 
date of publication and include the grounds for opposition. 
If oppositions are raised to the registration of a trade mark the Patent Office 
shall re-examine the registration in accordance with the provisions of Article 19. The 
proprietor of the registration shall be notified of the oppositions and given the 
opportunity to file his comments thereon. 
If the Patent Office does not take the oppositions into consideration a formal 
ruling to this effect shall be made known to the opponent and the proprietor of the 
registration. 
If the Patent Office does take the oppositions into consideration a formal ruling 
on the full or partial invalidation of the registration of the mark, shall be made 
known to the opponent and the proprietor of the registration. 
The result of the ruling referred to in the third and fourth paragraphs shall be 
published in the Patent Gazette. 
Article 23 
If an application for the registration of a trade mark, which is based on the 
right of priority in accordance with Articles 17 or 18, is filed after a similar mark has 
been registered and the Patent Office is of the opinion that the application would 
have prevented the registration, the proprietor of the registered trade mark shall be 
notified thereof and given the opportunity to express his comments thereupon. 
Should the application based on right of priority be accepted the registration shall be 
wholly or partially invalidated. 
The provisions of the first paragraph shall also apply when the Patent Office 
receives notice requesting that an international registration also apply in this country 
and it is evident that such registration would have prevented the registration of a 
mark which was applied for after the international registration took effect here, cf. 
Article 59. Article 24 IP/N/1/ISLlT/1/Rev.l 
Page 9 
At the request of the proprietor of a trade mark and upon payment of the 
prescribed fee, minor alterations may be made to a registered trade mark, provided 
that the general impression of the mark is not influenced. Alterations to a registered 
trademark shall be entered in the Register of Trade Marks and shall be published in 
the Patent Gazette. 
Article 25 
If the proprietor of a registered trade mark has not, within five years of the 
date of registration, used the trade mark in this country for the goods or services for 
which it was registered, or if such use has not occurred during a continuous five­
year period, the registration may be invalidated by verdict of a Court, cf. Article 28, 
unless there are valid reasons for the failure to use the trade mark. 
If a trade mark is used in a version different from that in the Register of Trade 
Marks, but such difference is, however, only insignificant and does not affect its 
distinctiveness, or if the mark has been used on goods or packaging in this country 
which are intended exclusively for export, such shall be considered to constitute use 
as referred to in the first paragraph. 
If a trade mark is used by a party other than the proprietor but with his 
authorisation, such shall be considered to constitute use by the owner. 
The registration shall not, however be eradicated if use of the mark 
commences after the end of the five-year period but before a request for invalidation 
is filed. If a request for invalidation has not been filed until at least three months 
have passed from the expiry of the five-year period, and the proprietor of the mark 
has commenced or re-commenced its use during the three months prior to the 
submission of the request for invalidation such use shall not have effect on the 
request for invalidation, provided the proprietor of the mark knew that the request 
would be filed when commencing preparations for its use. 
Should the use requirement have been complied with for part of the goods or 
services for which the trade mark was registered the invalidation shall not extend to 
this part of the registration. 
Article 26 
The protection of a registered trade mark begins on the date upon which the 
appJication in accordance with Article 12 was filed and shall apply for ten years from 
the date of registration. IP/N/lIISLlT/lIRev.l 
Page 10 
In accordance with an application from the proprietor of the mark the 
registration shall be renewed for a ten-year period at a time, calculated from the end 
of each period of registration. 
Article 27 
An application for renewal of a trade mark registration may be filed to the 
Patent Office as early as six months prior to the expiration of a registration period 
but no later than six months after the expiration of this period. The prescribed fee 
shall accompany the application. 
Should the Patent Office regard the application as satisfactory the renewal shall 
be entered into the Register of Trade Marks and published in the Patent Gazette. 
Should the application be considered unsatisfactory the applicant shall be notified of 
such and given a specific time limit within which he may rectify the application. 
Should no application for renewal be filed within the time limit referred to in 
the first paragraph the registration of the mark is no longer valid. 
CHAPTER III 
Cancellation of registration 
Article 28 
If a trade mark has been registered contrary to this Act the registration may be 
cancelled by verdict of a Court, subject, however, to the provisions of Articles 8-10. 
If the reason for invalidation is a lack of distinctiveness of the mark or other causes 
referred to in Article 13, assessment shall also have regard to use which has 
occurred after registration. 
Registration may also be cancelled by verdict of a Court if a trade mark: 
1. is not used in accordance with the provisions of Article 25, 
2. has, due to activity or inactivity on the part of the proprietor, acquired a 
general significance for a product or service in the area covered by the 
registration, 
3. is used in a manner which could mislead persons, for instance, as to the type, 
condition or origin of goods or services. 
Article 29 
Anyone who has legitimate interests at stake is entitled to initiate proceedings 
against the proprietor of a mark for the purpose of having its registration cancelled. 
In instances covered by the provisions of Points 1-3 of Article 13, the first 
paragraph of Article 14, Article 25 and the second paragraph of Article 28, the 
Patent Office shall be the plaintiff in litigation. Article 30 IP/N/1/ISLlT/1/Rev.l 
Page 11 
Anyone with legitimate interests at stake may demand that the Patent Office 
eradicate the registration of a trade mark if it is demonstrated that the activities of its 
proprietor have ceased. 
Before the Patent Office eradicates a registration in response to a demand 
under the first paragraph, the proprietor of the trade mark should be notified and 
given the opportunity to express his comments Within three months' time. Such 
notification should be sent in a verifiable manner. If the address of the proprietor of 
a trade mark is unknown the notification should be advertised in the Official Gazette. 
If the proprietor fails to contact the Patent Office within the above-mentioned time 
limit the mark shall be eradicated from the Register. 
Article 31 
Should the Patent Office make an obvious error in the registration, renewal or 
entry into the Register of a trade mark, the Office may correct the mistake within 
three months of the date of registration or entry. The correction shall be published in 
the Patent Gazette. 
Article 32 
Trade marks shall be eradicated from the Trade Mark Register: 
1. if the registration is not renewed, 
2. at the request of the proprietor of the mark, 
3. if the registration is declared invalid following oppositions, 
4. if the registration is declared invalid in accordance with Article 23, 
5. upon a verdict of a Court for the invalidation of a trade mark, 
6. upon a decision by the Patent Office if the activities of the proprietor of a trade 
mark have been confirmed to have ceased, cf. Article 30, 
7. in accordance with a decision by the Patent Office if an obvious mistake has 
occurred in the registration, renewal or amendment, cf. Article 31, 
8. if no agent has been appointed, cf. Article 35. 
The eradication of trade marks in accordance with the first paragraph shall be 
published in the Patent Gazette. IP/N/1/ISLlT/1/Rev.1 
Page 12 
CHAPTER IV 
Special rules on the registration of foreign trade marks 
Article 33 
An applicant who has neither activities in this country nor is a resident of a 
state which is a party to the Paris Convention for the Protection of Industrial 
Property or the agreement on the establishment of the World Trade Organisation 
(WTO) must prove that he has obtained registration' for a corresponding mark in his 
home country for the goods or services covered in his application. 
Subject to reciprocity the Minister may decide to waive the provisions of the 
first paragraph concerning the onus to prove registration in the home country. 
Article 34 
The Minister may decide that a trade mark which would not be registrable in 
this country but which has been registered in another country, may be registered 
here in the same manner as in the foreign country. Such registration shall not, 
however, provide wider protection in any respect than afforded by the registration in 
the foreign country. 
Article 35 
The proprietor of a trade mark who is not domiciled in this country must have 
an agent residing in this country. The agent must be authorised by the proprietor of 
the mark to receive summons, as well as other notification concerning the mark, on 
his behalf with binding effect on the proprietor. The name and address of the agent 
shall be entered in the Register of Trade Marks. 
Should no agent be appointed or should an agent resign from such 
representation, the proprietor of a mark is obliged to rectify this matter within a time 
limit decided by the Patent Office. If the address of the proprietor of a trade mark is 
unknown the notice of the time limit should be published in the Patent Gazette. 
Should no agent be appointed in accordance with the above before the expiry of the 
time limit the mark shall be eradicated from the Register. 
CHAPTER V 
Transfer, licenses, etc. 
Article 36 
The right to a trade mark may be transferred along with the commercial activity 
in which it is used or separately. 
If anyone transfers his commercial activities the transferee shall acquire the 
trade marks belonging to it unless otherwise agreed upon. Article 37 IP IN I lIISLlT I lIRev.1 
Page 13 
Anyone acquiring the right to a registered trade mark shall notify such to the 
Patent Office, who shall enter the change of ownership in the Register of Trade 
Marks. 
Until a transfer has been notified the latest registered proprietor of a mark shall 
be deemed its proprietor. 
Article 38 
The proprietor of a trade mark may grant others authorisation to use the mark 
commercially (a license). Licenses may be exclusive or non-exclusive and may 
cover all or part of the goods or services for which a trade mark has been registered. 
The proprietor of a registered trade mark may invoke his trade mark rights 
against a licensee who contravenes the provisions of a license agreement with regard 
to the duration, the version of the mark which may be used, where and when it may 
be used, or provisions concerning the quality of goods or services offered by the 
licensee under the trade mark. Unless expressly agreed, a licensee may not transfer 
his right. 
The proprietor of a trade mark or licensee may, upon payment of a prescribed 
fee, request that a license be entered in the Register of Trade Marks and published in 
the Patent Gazette. The same shall apply upon the expiration of a license. The Patent 
Office may refuse to enter a license if it is of the opinion that use of the mark by the 
licensee could lead to a danger of confusion. 
Article 39 
If the right to a registered trade mark has been used as collateral or taken for 
execution, such shall be entered in the Register of Trade Marks if the proprietor of 
the mark, mortgagee or executing creditor so requests. 
CHAPTER VI 
Prohibition against the use of deceptive trade marks 
Article 40 
Should the use' of a trade mark be considered deceptive, after it has been 
transferred or a license to use it has been notified, the party concerned may be 
prohibited by verdict of a Court from using the mark in its existing form. 
The same applies in other cases where a trade mark is deceptive, its proprietor 
uses it in a deceptive manner, or another party does so with his consent. 
The Patent Office, or anyone else with interests at stake, may initiate 
proceedings in accordance with this Article. IP/N/1/ISLlT /1/Rev.1 
Page 14 
CHAPTER VII 
Legal Protection 
Article 41 
A court injunction may be demanded to put a stop to any action which has 
already begun or is demonstrably in the offing and infringes or will infringe against 
a trade mark right. 
Article 42 
Use of a trade mark which is contrary to this Act may be prohibited by verdict 
of a Court. 
Any person who wilfully infringes against a trade mark right shall be liable to 
a fine. Depending upon the circumstances, punishment may take the form of 
detention or imprisonment for a period of up to three months. 
Fines as provided for in this Act may be levied against legal entities or 
individuals. A fine may be levied on a legal entity may regardless of whether or not 
an employee of the legal entity has been found guilty of an infringement. If an 
employee of a legal entity has committed an infringement against this Act or rules set 
in accordance with it, the legal entity may also be fined, provided the infringement 
was to the financial advantage of the legal entity or it has profited from the 
infringement. A legal entity is responsible for the payment of a fine which an 
employee may be sentenced to pay as the result of an infringement against this Act, 
provided the infringement was in conjunction with his employment by the legal 
entity. 
Cases under this Article shall be prosecuted in accordance with the provisions 
of the Criminal Proceedings Act. 
Article 43 
Anyone who wilfully or through negligence infringes a trade mark right shall 
make reasonable compensation for the exploitation of the trade mark and for other 
damages resulting from his infringement. 
Anyone who has profited from an infringement of a trade mark right, even 
though such involves neither intention nor negligence, shall make reasonable 
compensation. Such compensation shall not, however, exceed the estimated amount 
of profit resulting from the infringement. 
Article 44 
In cases arising due to infringements of trade mark rights a Court may decide 
on measures to prevent abuse of a trade mark. To this end a Court may decide that IP/N/1/ISLlT 11IRev.l 
Page 15 
the mark shall be removed from goods which are in the possession of the party 
concerned or otherwise at this party's disposal. If necessary a decision may be taken 
to destroy the goods or deliver them to the aggrieved party against or without 
compensation. 
Article 45 
Anyone who considers his interests to have been infringed against may initiate 
proceedings under Articles 43 and 44. These suits s'hall be prosecuted as civil cases, 
but claims under Article 43 may also be submitted as criminal suits. 
Article 46 
Should a licence have been issued for the use of a trade mark either the 
licenser or licensee shall have the right to prosecute in cases concerning 
infringements against trade mark rights, provided otherwise has not been agreed. 
Should a licensee initiate proceedings he shall notify the licenser thereof. 
Failure to fulfil this obligation may result in the dismissal of the case. 
VIII. CHAPTER VIII 
International Registration of Trade Marks 
Article 47 
International registration of a trade mark means registration of a trade mark 
with the International Bureau operated by the World Intellectual Property 
Organisation (WIPO) under a Protocol of 27 June 1989 to the Madrid Agreement on 
the International Registration of Trade Marks of 14 April 1891. 
In Iceland the Patent Office accepts applications for international registration of 
trade marks and handles international registrations. 
Article 48 
For acceptance of an international application, the applicant must be an 
Icelandic citizen, an individual domiciled in this country, or a party having a real and 
effective commercial establishment here who has already filed an application for the 
registration of the trade mark in this country or had the trade mark registered here. 
Article 49 
An application must be filed in writing to the Icelandic Patent Office on an 
application form for this purpose. The application shall be in English and shall 
specify what is the mark, including an illustration if appropriate, and for what goods IP IN I lIISLlT I lIRev.1 
Page 16 
or services registration is requested. It shall also give the name of the applicant or 
the name of the commercial activity. The prescribed fee for reception and handling 
must be paid. 
Article 50 
The Patent Office shall investigate whether the information in an international 
application corresponds with information in the application or registration of the 
trade mark in this country. 
Should there be any discrepancies the applicant shall be notified of such and 
set a time limit for the submission of his comments or corrections. Should no 
comments have been received from the applicant within the prescribed time limit his 
application shall be considered to have been withdrawn; if, despite his comments, 
discrepancies remain the Patent Office may refuse to forward the application to the 
International Bureau. 
If the information corresponds with that referred to in the first paragraph the 
Patent Office shall send a certification of such, along with the international 
application, to the International Bureau. The certification shall include the date of 
filing and the number of the national application, and registration if appropriate, 
upon which the international application is based. 
Article 51 
If the Patent Office receives notification from the International Bureau that the 
proprietor of an international trade mark registration, which does not fulfil the 
requirements of Article 48, has requested the extension of the registration to include 
this country, it shall investigate the registrability of the mark upon payment of the 
prescribed fee. 
Article 52 
Should the Patent Office consider the internationally registered trade mark not 
registrable in Iceland, the proprietor of the registration may express his comments 
on the matter and request that it be re-examined. The proprietor of the registration 
shall in such case appoint an agent in accordance with Article 35. The conclusion of 
the Patent Office shall be sent to the International Bureau, together with its grounds, 
before 18 months have elapsed from the date of notification by the International 
Bureau, cf. Article 51. 
If the Patent Office is of the opinion that there is nothing to prevent an 
international trade mark registration from being valid in this country it shall be 
published in the Patent Gazette. The published announcement shall include the date IP/N/1/ISLlT/1/Rev.1 
Page 17 
which the International Bureau has decided as the registration date of the 
international registration. 
Article 53 
Oppositions may be raised to the validity of an international registration in this 
country after its publication in the Patent Gazette. Reasoned oppositions must reach 
the Patent Office within two months of the date of publication. 
Upon receiving the oppositions, the Patent Office shall send notification to the 
International Bureau that the registration will not become valid in Iceland 
immediately, together with the reasons for the oppositions. 
The proprietor of an international registration may express his comments 
within a prescribed time limit and shall in such case appoint an agent in accordance 
with Article 35. 
The opponent and the proprietor of the international registration shall be 
notified of the ruling of the Patent Office when it is available. 
When the final conclusion is available the Patent Office shall notify the 
International Bureau thereof. If the oppositions are taken into consideration, the 
registration is wholly or partly cancelled in this country. The conclusion shall be 
published in the Patent Gazette. 
Article 54 
If both an international and a national registration are valid in this country for 
the same trade mark, owned by the same party, and the registrations cover the same 
product the international registration shall replace the latter and shall confer the same 
right as formerly applied due to the national registration. 
A change in accordance with the first paragraph shall be entered into the 
Register of Trade Marks and published in the Patent Gazette. 
Article 55 
If an international registration is wholly or partly cancelled it shall in the same 
manner be cancelled in this country. A notice of such shall be entered into the 
Register of Trade Marks and published in the Patent Gazette. 
Article 56 
Upon the expiry of a period of five years from the date of international 
registration, the registration shall remain valid in this country despite any 
cancellation of the registration or application which has been the basis for 
international registration. JP IN I lIJSLlT I lIRev.l 
Page 18 
Article 57 
If an international trade mark registration, which was valid here in this 
country, is cancelled within five years of the date of registration on the grounds that 
the application or registration of the trade mark upon which the international 
registration is based can no longer serve as the basis for such a registration, and the 
proprietor of the trade mark subsequently files an application for the same mark to 
be registered in this country, that application shall be treated as if it had been filed on 
the date of the international registration, provided the following conditions are 
fulfilled: 
1. the application must be filed no later than three months after the international 
registration was cancelled, 
2. the application does not cover goods or serVIces other than those of the 
international registration, 
3. the application complies in other respects with the requirements applicable to 
Icelandic applications for trade marks, including the payment of the prescribed 
fee by the applicant. 
Information in accordance with the first paragraph shall be entered in the 
Register of Trade Marks and published in the Patent Gazette. 
Article 58 
If the international registration of a trade mark which is valid in Iceland is 
cancelled within five years from the date of registration on the grounds that a 
country, which has been a party to the Protocol to the Madrid Agreement on the 
International Registration of Trade Marks, has denounced its membership and the 
proprietor of the trademark subsequently requests that the same mark be registered 
in this country, that application shall be treated as if it had been filed on the date of 
the international registration, provided the following conditions are fulfilled: 
1. the application is filed within two years of the date on which the denunciation 
took effect, 
2. the application does not cover goods or services other than those of the 
international registration, 
3. the application complies in other respects with the requirements applicable to 
Icelandic applications for trade marks, including the payment of the prescribed 
fees by the applicant. 
Information in accordance with the first paragraph shall be entered in the 
Register of Trade Marks and published in the Patent Gazette. Article 59 IP IN I lIISLlT I lIRev.1 
Page 19 
An international trade mark registration shall take effect and have the same 
legal effect in this country as other registered trade marks from its date of 
registration, date of subsequent designation or date of right of priority provided that 
registration has not been refused here. This Act shall apply mutatis mutandis to such 
registrations. 
Article 60 
Information concerning international trade mark registrations, such as amend­
ments, renewals, transfer of a mark, expiry or deletion of registration, etc. shall be 
published in the Patent Gazette. 
Article 61 
Decisions of the Patent Office concerning the processing of applications for 
international registration of trade marks may be referred to an appeals committee in 
accordance with the provisions of Article 63. 
Article 62 
The Minister shall set detailed rules on the implementation of this Chapter 
including, for instance, rules on the publishing of international trade mark 
registrations, oppositions to registration, renewal and fees. 
CHAPTER IX 
Miscellaneous provisions 
Article 63 
Decisions and rulings by the Patent Office in accordance with this Act may be 
referred to an appeals committee by the parties involved in the case within two 
months from the date the decision was taken. The appeal fee shall be paid within the 
same time limit. Should payment not be received with the time limit prescribed, the 
appeal shall be rejected as inadrnissable. 
A three-person committee, the appeal committee, appointed by the Minister 
shall issue a ruling in cases of dispute. The chairman of the committee, who shall be 
a lawyer with specialised knowledge of intellectual property rights, shall be 
appointed by the Minister for a three-year term at a time. The Minister shall appoint 
other members of the committee to issue rulings in individual cases of dispute. 
Should the parties involved seek a ruling from a Court, they should initiate 
proceedings within three months of the date when the Patent Office or the appeal 
committee made its decision. IP IN I lIISLlT I lIRev.1 
Page 20 
Article 64 
Anyone is entitled to acquaint himself with the contents of the Register of 
Trade Marks, either by inspecting it or by obtaining a copy from it. Everyone may 
obtain information as to whether a mark is registered. 
Article 65 
The Minister shall set detailed rules on \ the compiling of trade mark 
applications and their processing by the Patent Office, on the format of the Trade 
Mark Register and its keeping, the issuing of registration certificates and their 
contents, and the handling of opposition proceedings, as well as fees for 
applications, renewals, services, copies, etc. The Minister shall also set detailed 
provisions on referral and the appeal committee. 
Article 66 
This Act shall not affect the validity of earlier trade mark registrations even 
though the trade marks may not fulfil the requirements of the Act for registration as 
new trade marks. 
With regard to trade marks which were registered in accordance with earlier 
Acts, the specification of goods or services, referred to in Article 12, shall not be 
applicable until the registration is renewed. 
Article 67 
This Act shall enter into effect 1 June 1997. The Trade Marks Act, No. 47, of 
2 May 1968, as subsequently amended, shall be repealed from the same date. 
Applications received by the Patent Office prior to the entry into force of this 
Act shall be processed in accordance with the earlier Act. 
Done at Bessasta_ir, 22 May 1997 
Olafur Ragnar Grimsson 
(L. S.) 
Finnur Ing6lfsson