INTA’s Iceland case amicus brief throws the spotlight on the registrability of country names as trademarks

In our latest Saturday opinion column, we scrutinise the amicus brief submitted by INTA on the registrability of country names as trademarks.

INTA’s Iceland case amicus brief throws the spotlight on the registrability of country names as trademarks


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15 Jun 2021

Refusal of application for RING upheld on appeal

The Icelandic Board of Appeal has confirmed the partial refusal of the application for the mark RING on the ground that it was descriptive of certain goods in Class 9, including doorbells. Read more

23 Feb 2021

Board of Appeal confirms lack of likelihood of confusion between FASHION TV marks

The Board of Appeal has upheld a decision of the Icelandic Intellectual Property Office finding that there was no risk of confusion between two word-and-design marks containing the word element ‘fashion tv’. Read more

19 Oct 2020

Board of Appeal refuses to register UMAMI for food and drink goods and services

The Board of Appeal has overturned a decision of the Icelandic IP Office finding that the mark UMAMI - a Japanese word for what has come to be known as the fifth taste - was distinctive for food and drink-related goods and services. Read more

8 Jul 2020

Board of Appeal decision highlights difficulty of proving that mark has become generic

This decision of the Icelandic Board of Appeal emphasises the strict requirements for proving the alleged degeneration of a registered trademark under the relevant provisions of the Trademarks Act. Read more

Brand management

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1 Sep 2019

Procedures and strategies for pharmaceutical brands: Iceland

The parallel import of pharmaceutical products is permitted under Icelandic trademark law, provided that the product has been put on the market in the EEA by or with the consent of the trademark owner. Read more

2 Jul 2013

Transfer of business includes trademarks if there is no agreement to the contrary

In <i>Jens Gudjonsson Ltd v Jensdóttir</i>, the Reykjavik District Court has considered whether the transfer of a business to a private limited company included the transfer of the trademarks used in the business. The decision also clarifies the legal effect of the recordation of an assignment.

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Enforcement and Litigation

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12 Feb 2020

Supreme Court confirms revocation of TOPPÍS in ice cream war

In the long-running dispute between ice cream manufacturers Emmessís ehf and Kjörís ehf, the Supreme Court of Iceland has upheld a First Appeal Court decision ordering the revocation of Kjörís ehf’s mark TOPPÍS for goods in Class 30. Read more

8 Nov 2019

ISIPO considers 'legitimate interests' condition under Article 30(a) of the Trademarks Act

The Icelandic Intellectual Property Office has dismissed a claim for the cancellation of the mark LJÓSLEIÐARINN on the ground that the claimant had not met the ‘legitimate interests’ condition under Article 30(a) of the Trademarks Act. Read more

9 Jul 2019

Appeal court confirms cancellation of TOPPÍS mark in long-running ice-cream war

A ruling from the First Appeal Court of Iceland cancelling the trademark TOPPÍS brings to an end a years-long dispute between two manufacturers of ice cream. Read more

20 Mar 2019

Patent Office rejects WHEN IN ICELAND opposition

A recent Icelandic Patent Office decision serves as a useful reminder that the evaluation of similarity as set out in the Trademarks Act should always involve a nuanced comparison of the marks. Read more


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17 Apr 2015

Consumer Agency orders cancellation of '.is' domain name

The Consumer Agency has ordered the owners of '' to cease using the domain name and to cancel their registration. According to the agency, it must have been evident to the owners of '' that use of the domain name could violate Kex Hostel’s exclusive rights in its company name and in the domain name ''.

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Portfolio Management

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28 Nov 2018

Italian consortium prevents registration of EMILIANA by Chilean wine producer

Iceland’s Patent Office has upheld an opposition filed by Consorzio Tutela Vini Emilia – the Italian association for the protection of the GI ‘Emilia’ for wine – against the registration of EMILIANA by a Chilean wine producer. Read more

11 May 2018

Mastercard wins appeal against device mark for likelihood of confusion

The Board of Appeal has found a likelihood of confusion between Mastercard’s well-known device marks and a device mark comprising two interlocking circles.

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27 Feb 2018

APP STORE refusal overturned on appeal: mark distinctive for goods and services in Classes 9 and 35

The Board of Appeal has overturned a decision of the Patent Office refusing to register the mark APP STORE for goods in Class 9 and services in Class 35 on the grounds that it lacked distinctive character and was descriptive.

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26 Jan 2018

TÍMAFLAKK mark refused registration

The Reykjavik District Court has upheld an opposition against the registration of the trademark TÍMAFLAKK based on Article 13 of the Trademarks Act.

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Trademark law

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7 Sep 2017

Differences in assessing likelihood of confusion

The Icelandic Patent Office and board of appeal have differed in how to assess the likelihood of confusion between trademarks in Class 5. The board of appeal overturned the patent office's rejection of the TISTELTO mark, concluding that the prefix ‘TI’ made the marks sufficiently different to avoid any danger of confusion pursuant to the Trademarks Act.

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22 Feb 2017

Supreme Court: defendant acted in bad faith when registering mark identical to appellant's foreign mark

In Samba LLC v Sushisamba ehf, the Supreme Court has upheld Samba LLC’s claim for the cancellation of Sushisamba ehf’s registration for the mark SUSHISAMBA. Among other things, the Supreme Court found that Samba LLC had proved beyond doubt that Sushisamba ehf knew or should have known of the existence of Samba LLC's foreign mark when it registered its own mark, and had acted in bad faith under Article 14, Paragraph 1, Item 9 of the Trademarks Act. Read more

12 Jan 2017

Supreme Court finds in favour of Ursus

The Supreme Court has issued a judgment prohibiting Ursus Maritimus Investors from using the word 'ursus' in the company name, trademarks and otherwise in the course of business on the grounds of confusion.

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22 Jun 2016

Board of Appeal accepts registration of SHARING EXPERTISE

The Icelandic Patent Office had held that the word mark SHARING EXPERTISE lacked distinctive character and was descriptive of the goods and services covered. However, the Board of Appeal overturned this decision and accepted registration of the mark.

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