Trademarks

Applications and Renewals

We handle both national and international trade mark applications. Our services are tailored to the needs of every individual client and include, if required, availability searches, analysis and strategic advice on trademark selection, classification and the geographical scope of protection.

We moreover handle both national and international trademark renewals and offer tactical advice on portfolio management. We understand that a trademark renewal is not only a matter of a payment of a fee but rather a strategic tool to ensure that a trademark portfolio matches the client´s products or services as well as his brands.

We also offer comprehensive advice on the protection of existing trademarks and assist our clients in conducting license agreements and other agreements relating to the utilization of their trademarks.

Oppositions

We handle all opposition matters and offer both vast experience and legal expertise in such proceedings.

Furthermore, we apprehend that once a trademark has been registered it is fundamental for its owner to actively ensure that no other confusingly similar trademarks are granted protection in the countries where it is registered. We accordingly offer both strategic advice on possible opposition proceedings and represent our clients in such proceedings when a decision to oppose has been taken.

We have an established international network through which we are able to assist our clients in taking appropriate measures throughout the world.

Conflict Handling and Enforcement

We offer valuable legal expertise and experience once it comes to conflicts pertaining to trademarks and enforcement of trademark rights. We offer comprehensive advice on appropriate measures tailored to the client’s needs and the nature of the matter at hand. Our highly experienced attorneys are licensed to practice before the Supreme Court of Iceland and can thus represent our clients at all instances of the Icelandic court system.

Furthermore, we can assist our clients in attacking infringements in most jurisdictions through our well established international network.

Cancellation Actions

We handle all cancellation actions and have vast experience in such proceedings. In Iceland a trademark registration can be cancelled if the mark has not been actively used for the goods and services for which it is registered within five years of registration. Moreover, a trademark registration may be cancelled on other grounds, such as if it has been registered despite lack of distinctive character.

We manage cancellation actions at both ends, and consider the use requirement in our overall approach when implementing trademark strategies. We furthermore provide tactical advice on the feasibility of filing such a claim, for example when a trademark registration has been provisionally refused due to confusing similarity with an older registration.

Clearance Searches

We assist our clients in carrying out clearance searches. With a thorough review of existing rights the risk of running into obstacles once a trademark application has been filed can be greatly minimized.

Trademark Watch

We offer trademark watch services, designed to quickly identify any concerning trademark applications which our clients may need to act against. We review the monitoring reports thoroughly and provide our clients with advice on concerning results. It is our belief that monitoring should be viewed as a part of the overall trademark strategy of trademark owners.

Recordals

We handle all recordals to the Icelandic Intellectual Property Office in relation to trademarks. We work closely with the authority to ensure an efficient process at our end.