Several general principles are important for effective protection of intellectual property (“IP”) rights in Iceland. First, it is important to have an overall strategy to protect your IP. Second, IP may be protected differently in Iceland than in the United States. Third, rights must be registered and enforced in Iceland under local laws. For example, your U.S. trademark registrations and design or utility patent titles will not protect you in Iceland without further administrative procedures in the corresponding regional (EU) or local levels.
Most copyrighted works created in the United States will be automatically protected in Iceland from the moment of creation or publication according to international agreements. However, the extension of protection will vary according to the laws of Iceland. Protection against unauthorized use will vary depending on the national laws of each country.
Iceland is a first-to-file country for patents, i.e., the first person or entity to register the patent becomes the title holder. On the other hand, the trademark system is a first-to-use system, so the person or entity that shows proof of first use can trump the first registrant. Registration is recommended for protection, as ownership is difficult to establish when a trademark is not registered. U.S. firms doing business in Iceland should consider how to obtain patent, design, or trademark protection before introducing products or services into the Icelandic market. Ideally, businesses should consider adopting a global IP strategy before making IP public in any country to ensure no loss of rights outside the United States.
A patent registration can be directly obtained from the Icelandic Intellectual Property Office (ISIPO), or a bundle of patent registrations for a range of European countries, including Iceland, that are members of the European Patent Office (EPO), can be obtained from the EPO through a simplified process. A registration for a trademark or design can also be obtained at ISIPO. There are also other international registration systems like the Patent Cooperation Treaty for patents or the Madrid Protocol for trademarks, that could be useful to facilitate the protection of your IP in many countries of the world, including Iceland.
It is vital that companies understand that intellectual property rights are primarily private rights, and that the U.S. government cannot enforce them for private individuals in the EU or EEA. It is the responsibility of the rights holders to register, protect, and enforce their rights where relevant, retaining their own counsel and advisors. Companies may wish to seek advice from local legal counsel or IP consultants who are experts in Icelandic law. The U.S. Commercial Service can provide a list of local lawyers upon request.
While the United States government stands ready to assist, there is little that can be done if the rights holders have not taken these fundamental steps necessary to secure and enforce their IP in a timely fashion. Moreover, in many countries rights holders who delay enforcement of their rights may find that their rights have been eroded or abrogated due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a lawsuit. In no instance should U.S. government advice be regarded as a substitute for the responsibility of a rights holder to promptly pursue its case.
It is always advisable to conduct due diligence on potential partners. A good partner is an important ally in protecting IP rights. Consider carefully whether to permit your partner to register IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. Keep an eye on your cost structure and reduce the margins and the incentive of would-be bad faith actors. Projects and sales in Iceland require constant attention. Work with legal counsel familiar with Icelandic laws to create a solid contract that includes non-compete clauses and confidentiality/non-disclosure provisions.
It is also recommended that small and medium-size companies understand the importance of working together with trade associations and organizations to support efforts to protect IP and stop counterfeiting. There are a number of these organizations, in both Iceland and the United States, including Local American Chambers of Commerce.
In any foreign market, companies should consider several general principles for effective protection of their intellectual property. For background, see Protecting Intellectual Property and StopFakes.gov for more resources.
Iceland is not listed in the USTR’s 2023 Special 301 Report, but the country is listed in the Notorious Markets for Piracy and Counterfeiting 2022 Report, as Iceland reportedly hosts servers for hosting provider FlokiNET. The IP Attaché or IPR Contact for Iceland is Rachel Bae, located in Brussels. For more information on intellectual property rights in Iceland, see the Investment Climate Statement.