To print this article, all you need to do is be registered or log in to Mondaq.com.
The next round of the battle between Iceland and Iceland has begun. The supermarket and the country are going back to court to settle their long-running battle over whether the supermarket can mark the country’s name for their own use.
It’s a battle that’s been going on since 2002, when the supermarket filed its first EU application to trademark the name “Iceland.”
Although their request was granted in 2014 after several attempts and a flurry of legal activity, the decision continued to infuriate the Icelandic country. They continued to fight against the legitimacy of this brand. This culminated in 2019 when the country won a ruling invalidating the exclusivity of Iceland Foods’ European trademark registration.
According to RÚV, Iceland’s national broadcaster, the arguments resumed on Friday (September 9, 2022). Icelandic lawyers have again claimed that if their country loses the right to use the word “Iceland”, it would be a blow to Icelandic companies, as explained by Margrét Hjálmarsdóttir, lawyer at the Icelandic Intellectual Property Office :
“This would mean that Icelandic companies may not be able to use the word Iceland in their trademarks to refer to the products they sell.”
Their companies’ inability to describe themselves as Icelandic – at least to the outside world – seems harsh, especially since Iceland was first settled in 874 AD and Iceland Foods was only founded. than in 1970.
The case has now been taken to the Grand Council of the EU Intellectual Property Office (EUIPO), the bloc’s trademark authority. It is believed EUIPO members will make a final decision next year, but if either party feels aggrieved by the decision, they can take their case to the Court of Justice of the European Union.
WHAT IS THE STORY OF ICELAND VS ICELAND?
Iceland Foods first applied to the EU to register the name “Iceland” in 2002. At that time, Iceland was actually owned by an Icelandic company, the Baugur Retail Group. Unfortunately, they had to cede control of Iceland Foods to the banks in 2008 due to the effects of the financial crash.
In 2014, Iceland Foods founder Malcolm Walker regained control of the company and, largely due to his continued efforts, the EUIPO finally granted the company’s trademark application two years later. in 2016. As we said, it quickly became clear that this decision had angered the Icelandic government. They immediately attempted to settle the matter out of court, but were unsuccessful.
The row really started to heat up in 2015.
Iceland (the supermarket) attempted to prevent Iceland (the country) from branding its products with the “Íslandsstofa” mark. It was speculated that this was because Iceland Foods assumed it was its own business entity when in reality it simply meant “Inspired by Iceland”. However, it appears that Iceland Foods actually objected to the use of the word “Iceland”.
This perceived contempt for the Icelandic nation prompted the Icelandic Ministry of Foreign Affairs to partner with Promote Iceland, Business Iceland and patent law firm Árnason Faktor to find a way to protect Iceland’s national identity by arguing:
“Iceland is widely accepted as a geographic name and should never have been approved for a trademark in the first place.”
The 2019 EUIPO decision invalidating the exclusivity of Iceland Foods’ EU trademark registration stating:
“It has been adequately demonstrated that consumers in EU countries know that Iceland is a country in Europe and also that the country has historical and economic ties with EU countries, in addition to its geographical proximity.
The decision should be seen as a direct result of the actions of these organizations, although a statement by Iceland’s then foreign minister, Guðlaugur Þór Þórðarson, suggested they were less than impressed to have been placed in this position in the first place:
“I am delighted with this result, even if it does not surprise me, because it goes against common sense that a foreign company can file exclusive rights to the name of a sovereign country.”
As we reach the next chapter in the ongoing standoff between Iceland and Iceland, it will be interesting to see not only the outcome, but also the arguments presented as a high street retailer trying to get the exclusive commercial use of the name of a former sovereign state.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
POPULAR ARTICLES ON: European Union Intellectual Property