International Registration of Trademarks

If overseas marketing is planned, it is important to register the trademark in countries other than Iceland.

Trademarks registered with the Icelandic Patent Office are only protected in Iceland. An international application, however, must be based on a national application that will be registered later, or on a pre-existing Icelandic registration. The applicant, therefore, must submit an application for registration in Iceland to the Icelandic Patent Office, before or at the same time as the international application is submitted. The mark must be identical in both cases and the goods and service list may not be more extensive than indicated in the national application.

Applications for international registration must state the countries in which registration is requested. The mark can be protected in all the member states of the Madrid Protocol. The member states currently number well over 90 and include the European Union, China and the USA. A fee is paid for each designated country, although the decision on the registerability of the application is addressed separately in each country.

The application must be in English, using a form that can be obtained from the website of the World Intellectual Property Organisation (WIPO). Handling charges shall be paid to the Icelandic Patent Office in accordance with the price list, while other fees for the application shall be paid directly to WIPO. WIPO's website provides a calculator where the required fees can be calculated. Explanatory notes on the official application form MM2.

Applicants can take advantage of priority rights when submitting international applications, provided that the national application is not older than six months. The international application is then regarded as having been submitted at the same time as the national trademark application.

An international registration is valid for 10 years. Thereafter, the registration can be extended for 10 years at a time, as often as its owner desires.