Director General’s Address
The entire world’s population has been facing a previously unknown challenge this past year due to the pandemic, and everyone has had to adapt to new and unfamiliar circumstances. The operations and services of the Icelandic Intellectual Property Office are not exempted in this regard, and in a very short span of time all the Office's services were put on electronic form and most employees worked remotely. The ISIPO's employees deserve much praise for their flexibility, adaptability, patience and resilience in these uncertain times where changes occur frequently and unexpectedly.
Activities and mission 2020
The ISIPO had a staff of 36 at the end of the year 2020. Of these, one employee was on childbirth leave, and one employee worked at the European Union Intellectual Property Office (EUIPO) as a Seconded National Expert (SNE).
Activities and mission 2021
At the end of 2020, a decision was made to update the ISIPO’s strategic policy. This endeavour began in early 2021, and concomitantly the Office’s organisational chart was reviewed. In the revised policy, which remains valid until the end of the year 2021, there is an emphasis on the digital transformation of the ISIPO, which is duly represented in the new organisational chart.
Finance and Operations Department
Customer Service Department
Director General’s Office
The Director General’s Office handles issues that are common to all the Departments of the Intellectual Property Office, such as internal and external communications, digital development, and policy implementation.
It also provides legal counselling and works independently on specific tasks or policy areas in cooperation with the Director General or Department Heads.
The ISIPO also carries on a dialogue with intellectual property representatives in Iceland. It has regular meetings with the Icelandic Association of Patent and Trademark Representatives and the Association of Trademarks Experts in order to share information and ensure that the Institution can provide its clients with the best possible service.
To a considerable extent, these efforts take place with the involvement of the European Patent Office (EPO), although the ISIPO takes an active part in the management of the Institution as the representative of one of its 38 member states. The Director General of the ISIPO was elected Vice Chairperson of the EPO’s Executive Committee for a term of three years in May of 2019, in addition to which the ISIPO participates in various projects in connection with information technology and law, all of which are done for the purpose of making information about patents and applications more accessible to users on a global level, and harmonising the member states’ interpretation of comparable legislation. Furthermore, employees of the Office take part in both meetings and study courses given by the World Intellectual Property Organization (WIPO), of which Iceland is a member. The ISIPO is also a participant in extensive cooperation efforts involving the European Union Intellectual Property Office (EUIPO), the Nordic Patent Institute (NPI) and the European Free Trade Association (EFTA),as well as in cooperation between the patent and intellectual property institutions of the Nordic and Baltic countries.
Response to COVID-19
When the COVID-19 pandemic hit this country in the month of March, extensive measures were taken to adapt the ISIPO’s activities to the altered situation. In that regard, the main emphasis was placed on the security and well-being of employees but it was also stressed that the new circumstances that had arisen should have as little impact as possible on the ISIPO’s activities and services.
The Office's reception was temporarily closed on 16 March. In a short time the Office's IT experts made it possible for employees to continue their work remotely by providing the requisite equipment and secure connections, and in only a few days a large part of employees had switched to working remotely. In spite of these changes, there was no sign of any significant change in the number of applications nor of any effect on our employees’ productivity. On the contrary, there was a great increase in the number of trademark applications that were processed during the year compared with the previous year.
All services have been provided electronically while the ISIPO's reception has been largely closed since the epidemic began. It is possible to book a teleconference with a consultant through the home page, and there has been much demand during the period. There was also a particular emphasis on electronic services in order to be able to receive all data and missives electronically.
We are ready to serve
Services of the ISIPO
In 2020 the implementation of various measures were continued with the aim of building up and improving services by using state-of-the-art technology with due consideration of the needs of our clients. These measures are in line with the policy set out for the years 2018-2021 to increase the Office’s professionalism and visibility, improve the digital user experience and introduce new and improved services. This proved to be of good use when the pandemic hit at the beginning of the year and the reception had to be closed. New and improved services made it possible for us to maintain the same level of service and good communication with clients.
Pre-booked consultancy in the form of telephone calls or teleconferences increased steadily over the year. The number of electronic inquiries also increased. The home page www.hugverk.is includes the option of leaving a message at any time around the clock.
Electronic submitting of documents
In light of the provisions of the Administrative Procedures Act no. 37/1993 concerning electronic administration, the ISIPO accepts electronic documents as valid when originals are required by law or regulations, and the Office will also continue to accept hand-written signatures without demanding the original copy of the relevant document.
The ISIPO does however reserve the right to demand original paper copies of documents in such cases when this is deemed to be required, such as when it is likely that the documents are not unaltered from the originals.
Madrid e-Filing reduces application processing times and irregularities for IP Offices, while simultaneously offering applicants a convenient and time-saving alternative to paper forms. With such advantages, Madrid e-Filing is WIPO's preferred method of receiving international applications.
New electronic form for trademark applications
Customers can now subscribe to the ISIPO Gazette (formerly the Patent Office Gazette) and receive it via email as soon as it is published on the website. The Gazette is published once a month and includes all advertisements and announcements relating to applications and registrations in the field of patents, trademarks, municipal emblems and design.
Hugverkaskot, the ISIPO newsletter is published quarterly and includes news, articles and statistics related to the operations of the Office and other intellectual property related issues.
New English version of the ISIPO website
New types of trademarks
With new types of trademarks, businesses have new opportunities in trademark protection in Iceland. Take part in a entertaining game and guess the right trademark.
How many trademarks do you know?
Amendments to trademark legislation
Comprehensive amendments were made on 1 September 2020 in connection with processing and registering trademarks in Iceland with the entry into force of Act no. 71/2020 amending the Icelandic Trademark Act no. 45/1997. At the same time, a new general regulation regarding trademarks, Regulation no. 850/2020, entered into force. The Act incorporated of the Directive of the European Parliament and of the Council (EU) 2015/2436 in the field of trademarks into Icelandic law, whereby the approach of the EU member states and the EEA/EFTA-states to examining and registering trademarks has been harmonised in much more detail than before.
Act no. 155/2002 on Collective Marks was cancelled at this important junction, and provisions connected to it were included in the Trademark Act, which now also applies to collective and certification marks. By their very nature, such marks are trademarks, and are principally governed by the same provisions regarding procedure and other aspects as apply to them. However, efforts are currently being made to elaborate and update rules regarding their use.
Types of marks
A mark may now be elaborated in an application in any manner as long as it is done in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner, so that the government as well as the public will be able to recognise the clear and precise content of the protection which is granted to the owner by the registration. These criteria are not new as they were stated in the so-called Sieckmann-decision of the European Court of Justice in 2002, Case no. C-273/00, and replace the requirement that a mark must be visible. If the appearance of a mark requires more explanation it is permitted to submit a description with the application, but this is not required unless the mark is of another type than specified in the Regulation. The description must apply exclusively to the mark and may not lead to an expansion of the extent of protection.
Changes to procedure
The procedure previously known as administrative revocation has now, for more differentiation, been divided into invalidation on one hand and revocation on the other. The basis for a claim and the legal effects of each separate path are different, as invalidation results in a mark being considered to have never existed whereas revocation results in the voiding of the validity of a registration from a specific point in time.
The term of protection for marks that are the subject of applications on 1 September 2020 and later is now 10 years from the date of the application, not from the date of registration as is the case for the term of protection for older marks. The five-year required period of use will now be based on the final date of registration, and therefore the marks that are applied for after the amendment of the Act will not be assigned an actual date of registration until after the registration process is completed. The renewal of older marks remains unchanged and continues to be based on the date of registration.
Altered criteria 1 April 2021
From that time, new criteria will apply in the assessment of black/white marks and marks that are in tones of grey and the approach ”what you see is what you get” will be adopted – i.e. a mark that is black/white will not include colours other than black/white. However, this will not be retroactive and marks that are black/white or intones of grey that are applied for before the amendment enters into effect will continue to be interpreted in the same manner as before. In this regard, the ISIPO follows the criteria established through the coordination efforts of the European Union Intellectual Property Office (EUIPO) and published on 15 April 2014: CP4 – Common Communication on the Common Practice of the Scope of Protection of Black and White (”B&W”) Marks.
It will also be permitted to submit lists of goods and services in English instead of Icelandic along with applications submitted on 1 April 2021 and later.
Quality certification and quality system
In recent years the ISIPO has worked towards adapting the management system even further to the Office’s activities and making it more accessible. The reforms of 2020 mostly concern the remaking of the ISIPO's quality handbook and the introduction of the management system in Microsoft Office 365.
Green Steps and climate policy
In 2020 it was decided to introduce Green Steps, a project through which the ISIPO works towards reducing the environmental impact from its activities and to strengthen the environmental awareness of its employees. The project is implemented in five steps under the guidance of specialists from the Environment Agency of Iceland, and each step consists of between 20-40 actions which institutions must introduce in their activities. An environmental team was appointed specifically for this project, and the plan is that the steps will be completed before the end of the year 2021. The formulation of a climate policy will take place concomitantly with the Green steps in accordance with the Acton Climate Change, which public agencies are obligated to adopt. At the end of the year the ISIPO completed the first step, which was recognised by the Environment Agency of Iceland.
About one-fifth of Icelandic patent applications are related to the fisheries industry
Four Seasons, trademarks and the risk of confusion
Opportunities and value in the protection of intellectual property
Does the bitch sit with the Mafia?
The IP gender gap is a loss to us all
Technology Classification: the key to the International Patent Classification
Icelandic IP statistics from 2020
IP registrations at the end of 2020
The year 2020
The year 2020
The number of Icelandic trademark applications increased by 5.2% in 2020 in spite of the unfavourable economic situation brought on by the COVID-19 epidemic. Decisions to publish trademarks also increased by 47% in 2020 compared to 2019.
These positive numbers may indicate growth in innovation and marketing operations in Iceland. However, it is also interesting to note that among the Icelandic applications received during the year, a substantial number represented older and already established trademarks that were being registered for the first time. This may indicate that companies have taken the opportunity during the year to take a closer look at their intellectual property issues.
The number of decisions to publish trademarks increased greatly between years, by 47% (4,010 decisions in 2020 compared to 2,727 in 2019). The principal influential factor in this regard is the substantial increase in the number of published international trademarks, of which there were 73% more than in the previous year.
This increase is due to the redoubled efforts to investigate trademarks, which were initiated at the beginning of the year. The ISIPO examined about 4,300 trademarks, compared to 3,000 in 2019. The fact that a high percentage of ISIPO employees worked remotely due to the COVID-19 pandemic had no negative effects at all on the performance of investigations, but rather the contrary.
Renewals of registered trademarks increased by 13.2% between years (3,282 renewals in 2020 compared to 2,900 in 2019). There was an increase in the number of international renewals (10.4%), national-level Icelandic (20%) and national-level foreign (17.3%).
* With the changes in Icelandic trademark law that took effect on 1 September 2020, trademarks are now published for opposition two months before registration. For that reason, this statistical overview displays the number of decisions on trademark registrations to ensure consistency in how the data is presented before and after the new trademark law took effect.
The total number of national-level patents granted in this country in 2020 was the same as the previous year. Four national-level patents were granted to Icelandic parties and five to foreign parties.
The number of Icelandic PCT applications increased by 33% between the years, as 24 such applications were filed in 2020 compared with 18 in 2019. IS-PCT are international PCT applications that are filed in Iceland by an Icelandic applicant.
The number of validated European patents at the ISIPO decreased slightly in 2020 compared to the previous year. In 2020 a total of 1,443 European patents were confirmed in this country compared to 1,502 in 2019, which is a decrease of 3.9%. This is the first time since Iceland became a party to the European Patent Convention that there is a decrease in the number of confirmed patents between years.
The number of registrations of designs also decreased between years. There was a total of 84 design registrations in 2020, which is a reduction by 27.6%. In 2020, the ISIPO had 75 international registrations of designs but the number of national registrations keeps decreasing. Only nine were registered in 2020.
Rulings and decisions
In 2020 the ISIPO made a ruling in 7 objection cases and 11 decisions in cases regarding the validity of a registration. The ISIPO’s rulings and decisions can be viewed by clicking here.
Human resources and operations
Key figures for operations in 2020
521.5 million ISK
11.6 million ISK
515 million ISK
Medium length of employment
It is a challenge to maintain cohesion and good morale in such circumstances, but employees gave their all to maintain the connection through work and play under the altered circumstances. In addition to the many electronic conferences which were held regarding the Office's activities, the staff also arranged other electronic events such as bingo, pub quizzes, Christmas party and more.
The number of employees at the end of 2020 was 36. Of these, one employee was on childbirth leave, and one employee worked at the European Union Intellectual Property Office (EUIPO) as a Seconded National Expert (SNE). Employee turnover was low, about 4%, and mostly involved the hiring of temporary summer workers. Full-time equivalent positions at year-end 2020 were 34.25.
ISIPO employees make a donation to Ljósið
Those who would wish to contribute can make a donation to Ljósið by clicking here.