Changes to the Regulation on Trademarks

Changes to Regulation No. 850/2020 on the applications for and registration of trademarks, collective marks and guarantee and quality marks entered into force on 30 January 2023, with Regulation No. 59/2023. The changes mainly concern minor rectifications in relation to references or wording, aiming at improved clarity.

The main changes were the following:

• Article 9 a.: The provision outlines the procedures provided for in Article 23 of the Trademark Act No. 45/1997 (TMA) concerning priority of a later application.
• Article 14: The Icelandic Intellectual Property Office (ISIPO) may, in case of non-response to Office Action concerning formalities seek clarifications of delays in response after 6 months and continue proceedings based on available information after 12 months.
• Article 15(2): The ISIPO may rectify obvious mistakes in an application, provided that the applicant is notified.
• Article 47: List of goods and services must upon renewal continue to be in Icelandic if an application was filed prior to 1 April 2021 or if a mark was registered with list of goods in Icelandic. The exception relating to list of goods/services in English, cf. Article 4(2) of the regulation, only applies to applications filed on or after 1 April 2021.
• Articles 61 and 63: Text in descriptions of marks not matching the presentation of a mark, cf. Article 7(3) of the regulation, will not be entered into the Trademark Register.
• Article 76: The ISIPO no longer requires a copy of a Power of Attorney (POA) when a representative is appointed. However, the requirement for applicants domiciled abroad of appointing a representative, residing in the EEA, remains unchanged cf. Article 35 TMA. The ISIPO may request a copy of a POA at any time. Rules concerning non-appointment when required or resignation of representation have been further clarified, cf. Article 76(3-6).

The Regulation as amended is available here.