Iceland seeks meeting with Icelandic government over TM dispute
British supermarket Iceland Foods is “urgently” seeking a meeting with the Icelandic government after the country launched a legal battle against the chain.
Last week, WIPR reported that the Icelandic government had taken the action with the goal of “ensuring the right of Icelandic companies to use the word ‘Iceland' in relation to their goods and services”.
Iceland Foods currently holds the European trademark registration for the word mark 'Iceland'.
The Iceland government challenged the trademark at the European Union Intellectual Property Office (EUIPO), seeking to invalidate this registration on the basis that the term is “exceptionally broad and ambiguous in definition”.
Today, November 29, the supermarket chain explained that “following the regrettable outbreak of legal and verbal hostilities last week”, it is seeking a meeting to “lay out constructive proposals for resumption of the peaceful coexistence between the company and country that had prevailed for the previous 46 years”.
A spokesperson said that the chain has a long history of “close and friendly involvement” with the country and that for seven years, from 2005, Iceland was under the control of Icelandic investors, and later Icelandic banks.
Malcolm Walker, founder and CEO of Iceland Foods, said: “We registered Iceland as our company name in 1970 and we have coexisted with the country called Iceland very happily ever since. They have made no contact with us to raise any concerns about trademark issues since 2012.”
Last week, the government said that it has made multiple efforts over the past few years to negotiate with the chain.
Walker added that the chain has no desire to stand in the way of the country making use of their own name to promote their own products, “so long as it does not conflict or cause confusion with our own business”.
A delegation from the chain is preparing to fly to Reykjavik this week to begin negotiations, and “we very much hope for a positive response and an early resolution of this issue”, said Walker.
The Icelandic government said that it aims to find an acceptable solution for the use of the term.
A spokesperson said: “We would welcome an agreement with Iceland Foods to withdraw its exclusive trademark of the word mark ‘Iceland’. Since 2012 Iceland Foods has taken legal action against multiple companies from Iceland that use our country’s name to describe themselves.”
The spokesperson added that recent examples of legal action taken by the chain include action against fish retailer Iceland Gold, as well as Clean Iceland, a local retailer of sustainable Icelandic products which tried to register its name with the EU.
“In both cases legal actions were taken against the companies by Iceland Foods, blocking their ability to market their products,” they said.
They added that “Inspired by Iceland”, an official government-sponsored marketing programme aimed at promoting tourism to Iceland, is currently being blocked in Europe due to the registration by Iceland Foods.
In response, a spokesperson for the supermarket chain confirmed the company has opposed applications where there appeared to be "a risk of conflict or confusion" with the business. He added that the company had no idea that ' Inspired by Iceland' was “an official and government-sponsored programme” and that the registration to which Iceland Foods objected had nothing to do with promoting tourism to Iceland, "but covered a long list of products directly competing with our own".
