The next round in the battle between Iceland v Iceland has begun. The supermarket and the country are heading back to court to settle their long-running battle over whether the supermarket can trade mark the country’s name for their own use.
It is a battle that has run since 2002 when the supermarket made their first EU application to trade mark the name ‘Iceland’.
Although their application was granted in 2014 after several attempts and flurry of legal activity, the decision has continued to infuriate the country of Iceland. They have continued to fight against the legitimacy of this trade mark. This culminated in 2019 when the country won a ruling that invalidated the exclusivity of Iceland Foods’ EU trade mark registration.
According to RÚV, Iceland’s national broadcaster, the arguments began again on Friday (the 9th September 2022). Icelandic lawyers again claimed that if their country lost the rights to use the word ‘Iceland’, it would be a massive blow for Icelandic businesses as Margrét Hjálmarsdóttir, an attorney at the Icelandic Intellectual Property Office, explains:
“It would mean that Icelandic companies could possibly not use the word Iceland in their trade marks to designate the products they’re selling.”
If, as the Icelandic IPO fears, Icelandic businesses eventually find it difficult to use the word ‘Iceland’ because Iceland (the supermarket) feels their registrations would be too close to their name, the impact could be significant. To an outsider the potential for this seems harsh, especially as Iceland was first settled in 874AD and Iceland Foods wasn’t founded until 1970.
The case has now been put in front of the Grand Board of the EU Intellectual Property Office (EUIPO), the bloc’s trade mark authority. It is believed the EUIPO’s members will make a final decision next year but if one party feels aggrieved by that decision, they will be able to take their case to the Court of Justice of the European Union.
WHAT IS THE HISTORY OF ICELAND V ICELAND?
Iceland Foods first applied to the EU to trade mark the ‘Iceland’ name in 2002. At that time, Iceland was actually owned by an Icelandic business, the retail group Baugur. Unfortunately, they had to relinquish control of Iceland Foods to the banks in 2008 due to the effects of the financial crash.
In 2014, Iceland Foods’ founder Malcolm Walker took back control of the business and, largely thanks to his continued efforts, the EUIPO finally granted the company’s trade mark application two years later in 2016. As we’ve said, it quickly became evident that this decision had angered the Icelandic government. They immediately attempted to settle the matter out of court but were unsuccessful.
The dispute really started to heat up in 2015.
Iceland (the supermarket) opposed an EU trade mark application filed by ‘Íslandsstofa’ (an entity related to the Icelandic government it seems) for ‘Inspired by Iceland’. It was argued that this trade mark would allow the proprietor to open “Inspired by Iceland” supermarkets anywhere in the UK and EU.
This perceived slight against the Icelandic nation prompted the Icelandic Ministry for Foreign Affairs to join forces with Promote Iceland, Business Iceland and patent law firm Árnason Faktor to find a way protect Iceland’s national identity by arguing:
"Iceland is widely received as a geographical name and should have never been approved for trade mark in the first place".
The 2019 EUIPO ruling that invalidated the exclusivity of Iceland Foods’ EU trade mark registration stating:
“It has been adequately shown that consumers in EU countries know that Iceland is a country in Europe and also that the country has historical and economic ties to EU countries, in addition to geographic proximity".
The decision has to be seen as a direct result of these organisations’ actions although a statement from then Icelandic foreign minister, Guðlaugur Þór Þórðarson, suggested they were less than impressed to have been put in this position in the first place:
“I celebrate this result, although it in no way comes as a surprise to me, as it goes against common sense that a foreign company could file exclusive rights on the name of a sovereign country.”
As we reach the next chapter in Iceland v Iceland’s ongoing stand-off, it will be interesting to see not only the outcome but also the arguments presented as a high street retailer continues its attempt to preclude others from registering business names they feel are too close to theirs.
We will continue to monitor this case but if this blog has raised any questions regarding how to secure and protect your brand, please contact our specialist FMCG team today.