Until now the Icelandic Patent Office has considered the general indications of the class headings to constitute a claim to all goods/services falling under the class. Following the ruling of the Court of Justice of the European Union (ECJ) in the IP TRANSLATOR case the Patent Office has announced that, as of January 1, 2014, applications for class headings will be interpreted on a “means-what-it-says” basis.

The owners of trademark registrations, which covered the general indications before January 1, 2014, will have an opportunity to specify further the requested goods/services instead of the general indications. This amendment can only be requested once and only during the first renewal after January 1, 2014. It will not be possible to expand the protection of the mark and during examination the Patent Office will review the amended list of goods/services in accordance with the edition of the NICE classification that was in force when the mark was registered.

The Patent Office will accept applications covering the general indications of the class headings however the protection will only cover the goods/services specified in the class headings.

In addition, parts of the general indications for classes 6, 7, 14, 16, 17, 18, 20, 37, 40 and 45 will be limited as they are considered too wide. When filing new applications, trademark owners will be required to specify further the highlighted section of the class headings as shown below:

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 37: Building construction; repair; installation services.

Class 40: Treatment of materials.

Class 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

The Patent Office has not confirmed that this is obligatory during renewal. In order to ensure protection for all the goods/services of interest we recommend that the highlighted goods/services also be specified further at renewal.

Kindly contact us for further information in this relation.