Arnason Faktor

WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise.

Gold - Firms

A go-to for any and all IP matters, Arnason Faktor “is the firm we would direct brand owners to for tough registration and dispute resolution work”, reports one satisfied client. The dynamic boutique houses a dedicated team of trademark administrators, attorneys and attorneys at law who provide the most sophisticated consulting and business development services. It acquits itself with distinction before the authorities too, obtaining impeccable results before the Icelandic Intellectual Property Office (ISIPO), the EUIPO and WIPO. A vital contributor to the group’s success is Ásdís Magnúsdóttir, a whip-smart litigator with over two decades in the game and a repository of trust for some of the world’s biggest brands. Joining her in the guide this year is the “professional and knowledgeable” Maria Gunnarsdottir, who prosecutes applications through to grant with precision and seamlessly manages IP across borders.

Firm Profile

Arnason Faktor is the largest and most specialised IP practice firm in Iceland, with 20 employees and extensive experience and expertise in all fields of intellectual property. The firm can count on national and international cooperation and the support a professional team of highly qualified administrative staff.

Arnason Faktor has been a pioneer in the promotion of IP protection in Iceland. Led by four partners, the firm continues on the path shaped by its founding companies, constantly striving for excellence and evolving to meet the needs of its strong client base and future clients.

The firm prides itself on working with local industries in all fields and puts a strong emphasis on supporting the start-up community, while also helping companies access international markets. The firm’s partners frequently lecture in intellectual property at national universities, as well as educate the general public in IP matters. The firm’s aim is to offer a high-quality IP rights consulting service, including an IP rights-based business development consultancy.

Our professionals are specialised within the legal, scientific and technical disciplines, as well as the humanities. We offer extensive services in the field of intellectual property in Icelandic, English, German and the Scandinavian languages.

IP policing, litigation and due diligence

We assist our clients with any kind of contentious work in the field of intellectual property, including enforcement matters, strategies and preparing for and bringing IP cases through the litigation process. We have built up extensive experience in the field, which entails seeing cases through to the Supreme Court, along with handling cases before the European Free Trade Association Court.

We perform due diligence on IP rights for all purposes, including any kind of IP transaction, M&A and IP review for larger corporations; our specialists also advise on licensing and negotiating agreements.

Patents

The firm’s patent department boasts four European patent attorneys – all of whom have over 20 years’ experience in the field of intellectual property – and highly qualified administrative staff, who can assist clients with pre and post-grant services, as well as analysis and advice, including:

  • drafting, prosecution and administration before the Icelandic Intellectual Property Office (ISIPO);
  • representation before the European Patent Office;
  • oppositions and enforcement of IP rights;
  • litigation, including handling of complex supplementary protection certificate matters; and
  • validity, freedom-to-operate and infringement opinions.

Trademarks

A dedicated team of trademark attorneys, together with experienced and accomplished administrative staff, provides all services in the field of trademarks worldwide, including:

  • registration and prosecution of trademark applications before the ISIPO, international filings, as well as representation before the EUIPO;
  • watches and renewals;
  • brand protection surveillance and clearance on the Internet;
  • agreement drafting and execution; and
  • handling of a large volume of appeal board cases.

Designs, domains and copyright

Our team handles the registration and protection of designs, domain names and copyright globally. Services include:

  • registration and prosecution of design applications before the ISIPO;
  • filing and prosecution of international design registrations;
  • domain name registrations;
  • counterfeit matters;
  • enforcing and defending copyright claims;
  • assistance relating to all types of copyright agreement and assignments of copyrighted work; and
  • litigation of copyright-related matters.

IP portfolio administration, strategic advice and valuation

Our experienced and competent staff, supported by our efficient case management system, comprehensively manages and organises large-volume IP portfolios. Services include keeping all case records and watching all terms. We also offer services relating to IP management, including assisting clients with:

  • overall IP strategy;
  • mapping and watching IP portfolios and their competitors’ area of commercial interest; and
  • enforcing IP rights.

There is an increasing demand on companies to incorporate IP rights into their accounts and annual reports and through collaborating partners we can assist in appraising intellectual property.

Notable case

The case between Iceland Foods (UK) and various industry and governmental organisations in Iceland has been ongoing for almost 20 years. Arnason Faktor has been leading the case behalf of the Icelandic authorities and organisations. The dispute currently revolves around EUIPO registrations owned by Iceland Foods using the country’s name. In 2021 the EUIPO declared EU trademark 2 673 374 invalid in its entirety, thus upholding the Icelandic entities’ claims. The matter is now before the Grand Board of the EUIPO.
 

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