A recent story to hit the headlines concerns the trade mark dispute between the government of Iceland (the country) and the UK based frozen food retailer of the same name. Iceland (the UK food retailer) owns an EU trade mark registration for the word mark ICELAND. The Icelandic government believes that the retailer should not have these trade mark rights and has issued proceedings to invalidate the registration. The question is – will the Icelandic government melt the frozen food giant’s monopoly in the ICELAND mark?
Although this dispute only recently became newsworthy, it in fact began back in 2002, when Iceland Foods first filed the EU trade mark application for the word mark ICELAND. At that time, the Icelandic Ministry of Foreign Affairs, in conjunction with a number of bodies representing Icelandic trade and industry, wrote to the EU Intellectual Property Office seeking to prevent registration. However, all of their representations were rejected, and Iceland Foods went on to overcome an additional five oppositions by Icelandic companies to successfully obtain a trade mark registration in 2014.
Then, on 24 November 2016, the Icelandic Ministry for Foreign Affairs, together with a number of organisations which champion the interests of Iceland and Icelandic businesses, filed an application seeking to invalidate Iceland Foods’ trade mark registration. The basis of their application appears to be that the ICELAND mark lacks the necessary distinctive character required of a registered trade mark and that ICELAND simply (and only) describes a geographical origin. They are also arguing that the registration of a country name that enjoys highly positive national branding by a private company defies logic and is untenable, as it prevents companies from registering their country of origin products.
Iceland Foods maintain that it has built up a significant reputation in the ICELAND brand, having made commercial use of the name in the UK, and in many EU and non-EU countries, since 1970, including in Iceland itself. Its founder & CEO, Malcolm Walker, has stated that the company had Icelandic majority shareholders and Icelandic representatives on its board for seven years until 2012 and that, in that period, no representative of the Icelandic government raised a concern about the company’s branding.
It is understood that representatives from both parties recently met with a view to resolving the conflict but that no settlement was reached. We await the outcome of the dispute with interest and will report again when we know more.
In the meantime, this dispute highlights how central trade mark rights can be to the long-term survival of a business and how important it is for a business to obtain and maintain strong trade mark registrations.