TMT and IP in Iceland

Lex Law Offices

Lex Law Offices manages IP portfolios for companies across a range of sectors including the tourism, fishing, energy and telecoms industries; it also handles trade mark registrations in Iceland and other countries, commercial agreements with distributors, enforcement issues and infringement cases. The team is also well-versed in copyright, patent and GDPR law. Hulda Árnadóttir and Erla Árnadóttir jointly lead the team and handle a high volume of trade mark registration and protection work for major household names including Vodafone Iceland, MS Iceland Dairies and Coca Cola European Partners. Associate María Kristjánsdóttir is another key member of the team, with particular expertise in trade mark registration and enforcement matters.

Practice head(s):

Erla Árnadóttir; Hulda Árnadóttir

Testimonials

Service is almost 24/7, fast and reliable. There is always a solution to all of our problems.

The team is well organised, highly alert and has 100% insight into our sector, i.e. security and privacy. We feel that our TMT and IP issues are being managed by the best possible resources and that we are, in partnership with LEX, well equipped for protecting our current and future intangible assets.

Our primary contact in LEX is Erla Árnadóttir, who through our partnership for almost 20 years has extended the highest proficiency and candour in all her work at all times. She has put her heart into her service, resulting in a series of successful TMT and IP projects, gradually and strongly enhancing the image and value of our company on the Icelandic market.

Key clients

MS Iceland Dairies

Coca-Cola European Partners

The Coca-Cola Company

Sýn hf. (Vodafone Iceland)

Reykjavik Energy

Samherji hf.

Oliuverzlun Islands hf.

Reykjavik Excursions

Florealis ehf.

Promote Iceland

Work highlights

  • Handling portfolio management and other IP-related issues for Sýn.
  • Assisting Reykjavik Energy and its subsidiaries with portfolio management work.
  • Representing Promote Iceland in trade mark proceedings before the Icelandic Intellectual Property Office regarding the trade mark INSPIRED BY ICELAND.

LOGOS

With strength in commercial and contentious IP mandates, LOGOS also frequently advises clients on the data protection aspects of business operations (including GDPR compliance work), franchising agreements and disputes regarding trade mark and copyright infringements. In a recent mandate, team co-head Áslaug Björgvinsdóttir, who is a specialist in European data protection issues, worked with Guðmundur Oddsson assisting CCP with the sale of its entire shareholding to Pearl Abyss, representing the largest IT and IP exit in Iceland's history. Fellow co-head Hjördís Halldórsdóttir has considerable expertise in information technology and copyright law, which she leverages to advise major companies, banks and municipalities.

Practice head(s):

Hjördís Halldórsdóttir; Áslaug Björgvinsdóttir

Key clients

Emmessis ehf.

Verne Holdings ehf.

Siminn hf.

CCP hf.

Landsvirkjun

The Icelandic Broadcasting Service, Ríkisútvarpið

Marel hf.

Sigur ros

Arion banki hf.

Reykjanesbaer municipality

Work highlights

  • Acting for a local ice cream manufacturer in a trade mark dispute before the District Court of Reykjavík.
  • Acted for Arion Bank on its negotiations with RB for the implementation of new basic systems for the bank.
  • Handling data protection matters for Reykjanesbær municipality including mapping data processing activities and advising on GDPR issues.

Sigurjónsson & Thor ehf.

Led by distinguished European patent attorneys Valborg  Kjartansdóttir and Magnús Haukur Magnússon, Sigurjónsson & Thor ehf.'s IP group is frequently instructed in complex, high-value disputes before the Patent and Trademark Office, where it represents major international and domestic clients contesting registrations and seeking to set aside rejection orders. The team is also active in injunction proceedings in the District Court and domain name disputes, and has further specialism in unfair competition law. Magnús Hrafn Magnússon, who is 'a very skilled and attentive legal adviser', is also a key name to note for IP litigation, with experience representing foreign and domestic trade mark owners.

Practice head(s):

Valborg Kjartansdóttir

Testimonials

‘We have found the team to be very pro-active and commercially minded. They have quick response times and an in-depth knowledge of the Icelandic legal system. They have identified sensible solutions to some unique and challenging issues that we have faced. You never feel the need to send chasers as they will update you when it is correct to do so, without fail providing practical advice.’

‘The team consists of very skilled lawyers backed up by a strong group of paralegals. They provide excellent advice in both contentious and non-contentious matters.’

‘Magnús Haukur Magnússon is commercially minded and quick to respond.’

Key clients

PepsiCo. Inc.

Novartis AG

Home Box Office

Starbucks Corp.

Visa USA, INC

SIEMENS AG

Hyundai Motor Co.

Mars INC.

Novartis AG

Mattel INC.

Work highlights

  • Prevented an injunction against the use of a trade mark.
  • Successfully obtained the Superdry.is domain name for Superdry from an Icelandic counterpart through a resolution committee operated by the local domain provider.
  • Processed an opposition case before the Patent Office for Consorizo Tutela Vini Emilia.

ADVEL Attorneys at Law

ADVEL Attorneys at Law's IP practice handles a high volume of trade mark registration applications and disputes for domestic corporates, and represents companies filing and defending injunctions and damages claims. Kristinn Hallgrímsson is a key name in the practice and recently defended Rekstrarfelag 10-11 in a trade mark dispute brought by Íslandsstofa to appropriate the client's trade mark, raising novel questions as to what constitutes a well-known trade mark.

Practice head(s):

Stefan Thor Ingimarsson

Key clients

Kaupfelag Skagfirdinga

Rekstrarfelag 10-11

Advania Group

N1 hf.

HB Grandi hf.

Capretto ehf.

Sena – Entertainment

Polyhudun ehf.

Bayer Corporation

Vatnaskil ehf.

Samhjalp

Lactol ehf.

CoPeerRight Agency

Work highlights

  • Represented Rekstrarfelag 10-11 in a dispute regarding the trade mark INSPIRED BY ICELAND against Íslandsstofa, a governmental agency in Iceland.
  • Advised Headex group on trade mark issues in Iceland including securing registration of its trade marks before the Icelandic Patent Office.

Réttur – Adalsteinsson & Partners

Réttur – Adalsteinsson & Partners' TMT and IP practice handles a variety of disputes ranging from freedom of expression issues, breach of privacy work and data protection mandates through to infringement matters involving trade mark rights. The team also handles advisory work including portfolio management issues for major cultural institutions in Iceland, and assists with the full IP life cycle for emerging blockchain companies. Sigrún Ingibjörg Gísladóttir's expertise in this field includes advising arts and entertainment companies in Iceland on copyright and IP protection and enforcement.  Supreme Court attorney Sigríður Rut Júlíusdóttir is also well-known for advising cultural and creative bodies, including the Icelandic Writer's Union.

Practice head(s):

Sigrún Ingibjörg Gísladóttir; Sigríður Rut Júlíusdóttir

Key clients

The Icelandic Symphony Orchestra

Reykjavik City Theatre

Icelandic Writer’s Association

Stundin Media

Icelandic Water Holdings

Monerium

Icelandic Association of Actors

Work highlights

  • Acts as IP and TMT counsel for several major cultural institutions in Iceland, including the Icelandic National Symphony Orchestra and the Reykjavik Theatre.
  • Acted for Bára Halldórsdóttir in a high-profile whistle-blower case involving breach of privacy and data protection issues.
  • Acted for the Icelandic Writers’ Association on IP and publishing law mandates.

Juris

The TMT and IP practice at Juris handles contentious and non-contentious matters including GDPR compliance issues, freedom of expression matters, competition law disputes, corporate structuring work, governance mandates, financings and acquisitions; the majority of the firm's transactional work involves start-ups and established technology companies. Associates Hildur Þórarinsdóttir and Sigrún Magnúsdóttir recently joined the practice from the Icelandic Data Protection Agency and the University of Reykjavik, respectively. Andri Árnason continues to advise key client Síminn on its regulatory matters, and Stefán A. Svensson's expertise includes representing broadcasters in ECHR disputes and advising telecoms companies on competition issues and matters before the regulators.

Practice head(s):

Andri Árnason; Stefán A. Svensson

Key clients

Íslandspóstur hf.

Vísar rannsóknir ehf.

Aurora Stream ehf.

RÚV ohf.

Síminn hf.

Já hf.

Míla ehf.

Drífa ehf.

Five Degrees Software

Work highlights

  • Advised Vísar rannsóknir on its GDPR processes, updated its data protection policy and data processing agreement, and handled the general update of its standard agreements and terms and conditions.
  • Representing RUV in various cases relating to journalistic freedom of expression.
  • Acting for Síminn in two cases relating to exemptions granted to other telecoms operators regarding their cooperation in relation to mobile phone networks.