Region: Iceland

In <I>Gagnaeyðing Ltd v Valgeirsson</I>, the Supreme Court has upheld a decision of the district court finding that, although the compound word ‘<I>gagnaeyðing</I>’ lacked inherent distinctiveness, it had acquired distinctiveness through use. Interestingly, the court did not take into account the Patent Office’s refusal to register that word on the ground that it was descriptive.

20 July 2015

In <I>Icelandic Water Holdings Ltd v Iceland Glacier Wonders Ltd</I>, the Supreme Court has held that Iceland Glacier Wonders was not allowed to use the words ‘Iceland Glacier’ as part of its company name. However, the court found that Iceland Glacier Wonders could use the figurative mark SNO GLACIER WATER ICELAND, as there was no risk of confusion with Icelandic Water Holdings Ltd’s ICELAND GLACIER marks.

07 July 2015

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

17 April 2015

The Board of Appeal has upheld a decision of the Patent Office in which the latter had rejected a cancellation action on the ground that the ‘legitimate interests’ condition under Article 30 of the Trademarks Act had not been met. The applicant for cancellation had argued that its legitimate interests in the case were based on the existence of a risk of confusion between its mark and the mark the cancellation of which was sought.

21 January 2015

The Board of Appeal has overturned a decision of the Patent Office in which the latter had found that the trademark BODYFIT was descriptive of goods in Class 5. Among other things, the board held that, even if it were assumed that the mark gave the impression to consumers that the goods fit to the body or contribute to health and fitness, it was not evident that BODYFIT provided a general description of the goods at issue.

03 November 2014

In <I>Icelandic Water Holdings Ltd v Iceland Glacier Wonders Ltd</I>, the Reykjavik District Court has considered whether the defendant, which markets and exports water, could use the plaintiff’s ICELAND GLACIER marks in its company name. Among other things, the court held that the plaintiff could not rely on its word mark ICELAND GLACIER, since water and ice were specifically excluded from the application at the examination stage.

04 September 2014

In <I>Gagnaeyðing Ltd v Pétur Axel Valgeirsson</I>, the Norðurland eystra District Court has considered whether the defendant’s use of the name Gagnaeyðing Norðurlands infringed the plaintiff’s rights in the mark GAGNAEYÐING ('<I>gagn</I>' means ‘data’, while '<I>eyðing</I>' means ‘destruction’). Among other things, the court found that the word '<I>gagnaeyðing</I>' had acquired distinctiveness through use over a period of 20 years.

31 July 2014

The Board of Appeal has overturned a decision of the Patent Office in which the latter had found that the mark CAFFE VERONA was descriptive of goods in Class 30 and deceptive as to the origin of the goods. Among other things, the board held that Icelandic consumers would not consider that goods bearing the mark originated from Verona in Italy.

29 May 2014

In <I>Swatch SA Switzerland v Ice SA Belgium</I>, the Board of Appeal has upheld a decision of the Patent Office finding that there was no likelihood of confusion between Ice SA Belgium’s mark ICE WATCH and Swatch SA Switzerland’s marks SWATCH and ISWATCH. The Patent Office and the Board of Appeal came to the same conclusion, but on slightly different grounds.

27 March 2014

In <i>Hachette Filipacchi Presse France v Elínrós Líndal Ragnarsdóttir Iceland</i>, the Board of Appeal has overturned a decision of the Patent Office finding that there was no likelihood of confusion between the marks ELLE and ELLA for goods in Class 25. Among other things, the board referred to decisions of the Supreme Court according to which the first syllable of the marks usually has more weight in the assessment of the likelihood of confusion.

22 January 2014