Iceland v Iceland

29 November 2016

An interesting case has been filed recently by the Government of Iceland, on behalf of Iceland's businesses and people, to cancel the EU trade mark ICELAND owned by the UK supermarket chain, Iceland Foods. The goal of the case is to ensure Icelandic companies are not hindered from using the word ‘ICELAND' in relation to their goods and services.

Iceland Supermarket

This is all taking place at the European Union Intellectual Property Office (EUIPO). The action to cancel the ‘ICELAND’ trade mark registration comes amid claims that food and drink are strongly connected to Iceland (the country) in consumers’ minds, and consumers are likely to see ‘ICELAND’ only as a description of geographical origin and are currently being deceived about the origin of the goods sold.

From a legal perspective, it’s interesting because if a trade mark was descriptive when it was registered, and has since acquired distinctive character through use then it should not be declared invalid. So success in the action may rely on arguing that the trade mark was deceptive as to geographic origin at the time it was applied for in 2002.

The case also states that the supermarket intends to hinder Icelandic entities in trade, because it has opposed trade mark applications where ICELAND appears in a geographical context – for example these logos:

Example logo 1

Example logo 2

Before all this started, it had taken 12 years for the supermarket’s mark to be registered – an exceptionally long time – because it was opposed (by different companies) on the basis of various earlier trade marks.

For more information and to read the full article, please visit: https://www.mfa.is/news-and-publications/legal-actions-over-the-use-of-the-word-iceland

Jane More O'Ferrall

Jane More O'Ferrall

Partner, Trade Mark Attorney

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