Checklist of Issues on Enforcement under TRIPS Art. 63.2 - View details of the document


(a) Civil judicial procedures and remedies

The district courts and the Icelandic Supreme Court handle both civil and criminal cases and have jurisdiction over IPR infringement cases.
All persons who have a legal interest in asserting IPRs have standing to do so. They may be represented by independent legal counsel before the court. In civil proceedings, a party is not required to appear personally if represented by legal counsel. In criminal proceedings, the injured party is as a general rule required to appear before a court to give evidence.
According to Articles 67 to 69 of the Civil Proceedings Act no. 91/1991, judicial authorities may order a party to produce written evidence which lies within that party’s control unless that party, on the basis of the evidence in question, is exempted pursuant to provisions exempting witnesses to give testimony for specific reasons, see Articles 51 to 59 of the Civil Proceedings Act no. 91/1991.
The court may decide to hear evidence in camera pursuant to Articles 8 and 9 of the Civil Proceedings Act no. 91/1991 and Sections 8 and 9 of the Criminal Proceedings Act no. 19/1991. The court may instruct remaining persons at the session to keep secret any facts of which they learn in the proceedings.
) Injunctions Pursuant to Article 23 of Act no. 31/1990, a right holder or anyone else with legal interest therein may request an injunction from the judicial authorities to prohibit a party from committing an act that presents an imminent danger of infringement of intellectual property rights. If an injunction is granted the plaintiff must initiate court proceedings to confirm the injunction before the court. See also: Article 41 of the Trademarks Act, Article 35 of the Design Protection Act, Article 59 of the Patents Act. (b) Damages, including recovery of profits, and expenses, including attorney's fees When an offence has resulted in financial damage, compensation shall be made according to the general laws concerning compensation pursuant to Section 56 of the Copyright Act, Article 43 of the Trademarks Act, Article 37 of the Design Protection Act, Article 58 of the Patents Act and Article 6 of the Semiconductor Act. The general rule concerning attorney's fees is that a party that loses a case before a court shall be ordered to compensate the other party's expenses in full. (c) Destruction or other disposal of infringing goods and materials/implements for their production A court may decide to destroy infringing goods or otherwise make them unserviceable pursuant to Section 56 of the Copyright Act, Article 44 of the Trademarks Act, Article 38 of the Design Protection Act and Article 59 of the Patents Act. A court may order seizure without payment of infringing goods in favour of the injured party, or that they be surrendered to him against payment not exceeding production costs. See also Article 36.3 of the Design Protection Act. (d) Any other remedies A court can award punitive damages to a person whose rights have been illegally infringed, see Article 56 of the Copyright Act. According to Article 59.2 of the Patents Act, a court may grant the owner of the products, apparatus, tools and other articles referred to in paragraph 1 permission to dispose of these freely during the term of the patent or part of that term in return for reasonable compensation and on reasonable conditions in other respects.
There are no legislative provisions aimed specifically at obliging an infringer to inform the right holder of the identity of persons involved in the production and distribution of infringing goods or services or of their channels of distribution. If there is an ongoing civil procedure, the right holder as a party to the case can on the basis of Articles 67 and 68 of the Civil Procedure Act request assistance from the judge to force the opposing party (infringer) to hand over any existing written documents.
A party who has abused enforcement procedures by requesting measures to be taken to wrongfully enjoin or restrain another party may be ordered by the judicial authorities to provide compensation for the injury suffered because of such abuse. Compensation is normally intended to cover all the losses that the abuse has caused the other party. The compensation may therefore also include all expenses incurred in the process of exoneration, including appropriate attorney's fees. On the basis of jurisprudential law, public authorities are not exempted from liability to appropriate remedial measures where actions are taken or intended in bad faith in the course of the administration of any law pertaining to the protection or enforcement of IPRs.
There are no particular provisions in Icelandic law governing the length and cost of proceedings. However, the underlying principle for all court proceedings is that a conclusion shall be reached without undue delay. Procedure before the Supreme Court normally takes 6-12 months. It is not possible to provide data on the actual duration of intellectual property cases, as the circumstances differ considerably, or to give any indication of the actual costs incurred.

(b) Administrative procedures and remedies

Article 57 of the Copyright Act provides that, should no agreement be reached regarding the amount of the reimbursement provided for in Articles 14, 15a, 16, 17, 20, 21, 23, 23a, 25 and 47, either party may in specific cases submit the dispute for resolution to a three-person arbitration committee. Otherwise, there are no administrative procedures applicable as to remedies in the case of intellectual property infringements. They are dealt with exclusively by the courts of law.

(a) Judicial measures

Provisions on provisional measures in the form of interlocutory injunctions exist as regards infringements in: Article 41 of the Trademarks Act. Article 35 of the Design Protection Act. Article 59 of the Patents Act. In addition to those special provisional measures mentioned directly in the respective intellectual property laws there are general provisions on provisional measures in Act No. 31 from 1990 relating to attachment of properties, restraining orders etc. According to those provisions a person who has a claim against another person may request a magistrate to order a provisional measure. As a provisional measure a magistrate can order the defendant to refrain from, perform or tolerate an act. If a magistrate orders a provisional measure, the claimant has to institute, within one week from the order, a proceeding in court. The court shall examine the claim. If a proceeding is not instituted the measure shall immediately cease to apply.
A provisional measure may be issued if the plaintiff deposits a security with the magistrate for the damage which may be caused to the defendant. According to Article 18 of Act No. 31 from 1990 the order can be issued without hearing the defendant. The magistrate must inform the plaintiff about the order. The applicant has to institute a proceeding within one week from the order. The usual rules concerning proceedings then apply.
A provisional measure may as a general rule not be ordered unless the claimant has proven that it is more likely than not that he has a claim against the defendant. The court may make it a condition for ordering a provisional measure that the claimant provides a security or equivalent assurance sufficient to protect the claimant. If the court decides to order a provisional measure it shall at the same time decide how the measure is to be effectuated. The court may decide when the measure is to enter into force and the duration of it. The court may also decide that the defendant is to be able to avoid the entering into force and the effectuation of a provisional measure by providing a security or equivalent assurance sufficient to protect the claimant. The court may in its decision to order a provisional measure or in a later decision made upon the request of the defendant, determine a reasonable period in which the claimant must initiate civil proceedings leading to a decision on the merits of the case. The defendant may request a nullification or limitation of the measure if new evidence is put forward, or if the circumstances which the decision to order the provisional measure was based upon in some other way have changed. Where the provisional measures are revoked or where they lapse due to any act or omission by the claimant or where it is subsequently found that there had been no infringement of an intellectual property right when the provisional measure was ordered, the judicial authorities have the authority to order the claimant to provide the defendant appropriate compensation for any injury caused by the measures.
See answer to question 8.

(b) Administrative measures

Provisional measures may not be ordered administratively in Iceland.
According to the first paragraph of Article 50 A in the Customs Act No. 55 from 1987, the suspension of the release, etc., by the customs authorities applies only to counterfeit trademark or pirated copyright goods. The minister can, however, decide in a regulation that the provisions shall also apply to infringements of other intellectual property rights according to paragraph 6 of Article 50. Goods which are imported in small amounts by tourists and small shipments of non-merchandise goods are exempted from the application of these procedures. The procedures do not apply to imports of goods put on the market in another country with the consent of the right holder and to goods destined for exportation (See paragraph 5 of Article 50 A).
A right holder may apply in writing to the customs authorities for an action against the import of counterfeit or pirated goods. The application shall contain a sufficiently detailed description of the goods and evidence that the applicant is actually the right holder in relation to the goods. Following an examination of the application, the customs authority may suspend the release of the goods or retain them for a period of up to ten days. Where the relevant customs authority has not, within ten days from the application, been informed about the fact that the matter has been referred to the competent authority, the goods shall be released; this period may however, where necessary, be extended by no more than ten days. The customs authorities may request the applicant to provide a security in order to guarantee his obligations towards the persons affected by the action and the payment of the costs for the keeping of the goods by the customs authorities. The owner, importer or receiver may request the release of the goods, against providing a security in order to protect the interests of the right holder. The customs authority shall, at the request of the right holder, inform him about the person who has submitted the customs declaration and about the receiver, if he is known. Also, the authority shall give the right holder and other persons who are affected by the actions taken an opportunity to inspect the goods
The provisions on the length of the proceedings, in particular the time-limit for suspension of the release or the retention (10 days with a possibility for an additional 10 days) have been indicated above. There is no data available as regards the costs of such proceedings. The Minister may prescribe a fee for these proceedings.
The customs authority can, upon its own initiative, retain goods if it has proof that goods are actually counterfeited or pirated. The customs authority shall inform the right holder as soon as possible and give him three days to file an application as mentioned above.
When a court has decided upon an infringement of intellectual property rights and the court has not ordered any special measures, the customs authority has authority to destroy the goods or undertake other measures.
The district courts and the Icelandic Supreme Court have jurisdiction over criminal acts of infringement of IPRs.
Criminal procedures and penalties are available in respect of: a)a violation which comprises an act of premeditation or gross negligence, see Article 54 in the Copyright Act; b) any wilful infringement of a trademark right, see Article 42 of the Trademarks Act; c)any wilful infringement of the exclusive rights conveyed by the protection of a design, see Article 36 of the Design Protection Act; d)any intentional infringement of the exclusive right conferred by a patent, see Article 57 of the Patents Act; and e) any infringement, see Article 7 of the Semiconductor Act.
The public prosecutor is responsible for initiating criminal proceedings in respect of infringement of IPRs.
According to Article 59 of the Copyright Act an injured party may, as a rule, also initiate legal proceedings ("civil criminal proceedings"). According to Article 39 of the Design Protection Act, anyone who considers his interests to have been prejudiced has the right to initiate legal proceedings in accordance with the provisions of Section VII. Legal proceedings under Article 36 shall be prosecuted according to the rules on criminal proceedings and claims under Article 37 may be submitted as criminal suits. According to Article 45 of the Trademarks Act, anyone who considers his interests to have been infringed against may initiate legal proceedings under Articles 43 and 44. These proceedings shall be prosecuted as civil cases, but claims under Article 43 may also be presented in a criminal suit. According to paragraph 3 of Article 57 of the Patents Act, proceedings shall be brought by the injured party. There are no limitations as to criminal proceedings
a) Imprisonment The criminal remedies available are basically the same in respect of all intellectual property rights and include fines or imprisonment for up to three months (up to two years in case of copyright infringement) for acts committed with premeditation or with gross negligence. Article 54 of the Copyright Act. Article 42 of the Trademarks Act. Article 36 of the Design Protection Act. Article 57 of the Patents Act. (b) Monetary fines See above and Article 7 of the Semiconductor Act. (c)Seizure, forfeiture and destruction of infringing goods and materials and implements for their production The provisions on seizure, forfeiture or destruction of materials and implements for their production are basically the same as regards all intellectual property rights. They have been described in the context of question 5.
See answer to question 8.