Decisions Regarding ICELANDIA Trademarks

The Icelandic Intellectual Property Office (ISIPO) recently decided in case No. 1/2024, concerning a request for the cancellation of the registration of the word and figurative mark ICELANDIA No. V0018584, and issued a ruling in opposition case No. 2/2024 regarding the word mark KYNNISFERÐIR ICELANDIA No. V0128100.

The ISIPO agreed to the cancellation of the registration of the word and figurative mark ICELANDIA, but the opposition regarding the registration of the word mark KYNNISFERÐIR ICELANDIA was not upheld.

The request for the cancellation of the word and figurative mark ICELANDIA No. V0018584 was based on the fact that the mark had not been used for a period of five years as required by Article 25 of the Trademark Act No. 45/1997. In such cases, the burden of proof reverses, and it is the responsibility of the trademark owner to prove that the mark has been used in accordance with the provisions of the law, i.e., put into use within five years from the completion of the registration process or used within the last five-year period before the cancellation request was filed. Since no evidence of the mark's use was presented, the request was accepted, and the registration of the mark was annulled. This decision can be appealed to the Industrial Intellectual Property Appeal Board.

The full ruling can be read here (in Icelandic).

The opposition against the registration of the word mark KYNNISFERÐIR ICELANDIA No. V0128100 was based on the risk of confusion with several of the opponent's registered marks containing the word ICELANDIA, as well as the opponent's claim to a better right based on the use of the ICELANDIA mark. No evidence of use that could establish trademark rights to that word for the opponent in the sense of trademark laws was presented. Despite the occurrence of the word ICELANDIA in various marks of the opponent, the ISIPO concluded that the word itself lacked distinctiveness and differentiation capability and was not registrable as it essentially means Iceland, despite the addition of -IA. The word was therefore considered descriptive, at least of the origin of goods and/or services, and thus a weaker element of the marks under discussion. No risk of confusion was deemed present. This decision can be appealed to the Industrial Intellectual Property Appeal Board.

The full ruling can be read here.