IP Information & News

Iceland v Iceland — is it fair to trade mark the name of a country?

Christopher Banister

By Christopher Banister

Trade Mark Attorney

Described as the beginning of a new trade mark ‘cold war’ in the tabloids, the Icelandic government has now officially taken a stand in the long running dispute surrounding the EU trade mark registration for the word ICELAND. On 14 November 2016, The Icelandic Ministry of Foreign Affairs (and others) officially filed an application for a ‘Declaration of Invalidity’ against the trade mark at the European Union Intellectual Property Office (EUIPO). Negotiations appear recently to have hit the buffers.

Background

On 23 April 2002, Iceland Foods Limited filed an application to register the word ICELAND as an EU trade mark in classes 7,11,16,29,30,31,32 and 35. Despite several official oppositions from a number of Icelandic companies, the trade mark was successfully registered on 09 December 2014. Iceland Foods Limited has since been accused of aggressively pursuing Icelandic companies which use the word ICELAND as a means of representing themselves in the course of trade. Over the last few years, the Icelandic government has attempted to negotiate with the supermarket chain in an effort to protect the interests of its small and medium sized businesses in relation to their use of the word ICELAND. It is now evident, however, that these attempts to alleviate the tension between the two parties were in vain as the Icelandic government has now taken the decision to go on the offensive with its attempt to officially invalidate the ICELAND trade mark.

Legal analysis

You might be asking yourself, ‘but how can a supermarket monopolise the name of an entire country by registering it as a trade mark?’

First of all, a trade mark registration does not grant a monopoly per se. Rather, it grants the owner the exclusive right to use the mark in relation to registered goods and services and to prevent others from using identical or similar marks in a manner which may be detrimental to the rights and interests of the owner. This right does not provide a ‘carte blanche’ for the mark to be used in any way the owner sees fit (for example its use in the UK could still fall within the scope of the common law tort of passing off). Furthermore, the registration is subject to various limitations, such as the right of others to use signs or indications which are not distinctive (meaning they are not perceived by the public as functioning as trade marks) or which concern, among other things, the geographical origin of the goods or services. These limitations only apply, however, where the use is in accordance with honest practices in industrial or commercial matters.

Secondly, European trade mark law prohibits the registration of trade marks which consist exclusively of a sign which may serve in trade to designate, among other things, the geographical origin of the goods or services. This prohibition serves the public interest in keeping free signs which other economic operators may wish to use in trade to describe their goods and services. However, if it becomes evident that a sign, such as ICELAND, has been used in such a way that a significant proportion of the relevant public have been educated to perceive it as a distinctive trade mark in relation to the applied for goods or services, then the public interest is deemed to be better served in allowing the owner to register that sign and in so doing, to protect its essential function in guaranteeing the identity of the origin of the marked product to the consumer. In a nutshell, if a significant proportion of people perceive the sign ICELAND as a trade mark, the law will allow it to be registered and protected as a trade mark.

Therefore on the basis of their registration, Iceland Foods has the right to prevent others in the EU from using identical or similar signs which may impair or damage the functioning of its trade mark ICELAND. The Icelandic government however clearly does not believe that Iceland Foods is entitled to these rights and by filing for a Declaration of Invalidity, it claims that the mark should never have been registered in the first place. The invalidity application puts forward the claim that the registered mark consists exclusively of a sign which may serve in trade to designate, among other things, the geographical origin of the good or service and that it is devoid of any distinctive character. The application also claims that the registered mark ICELAND is of such a nature that it deceives the public, for instance as to the nature, quality or geographical origin of the goods or services.

Comment

The ICELAND mark is almost certainly distinctive to UK consumers as a sign referring to a particular undertaking that provides frozen food products and related retail services. But can the same be said for consumers throughout the European Union? Moreover, are consumers on the continent likely to be deceived in to thinking that products bearing the ICELAND mark originate from, or are associated with, Iceland (the country) rather than ICELAND the frozen food supermarket? These are the kind of questions that are likely to be put to Iceland Foods Limited in the course of these proceedings.

Recent media reports have indicated that Iceland Foods Limited has approached the Icelandic government in an effort to amicably settle the dispute, but that the negotiations have broken down with down. A settlement would certainly represent the best outcome for both parties as it could potentially mean avoiding a rather lengthy and costly legal battle through the EU Courts.

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