Iceland v Iceland: the TM battle begins
The government of Iceland has launched a legal battle against the British supermarket of the same name.
Yesterday, November 24, in a statement, the Icelandic government confirmed it 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”.
Along with SA Business Iceland and Promote Iceland, the government is taking this step because “Iceland Foods has aggressively pursued and won multiple cases against Icelandic companies which use ‘Iceland' in their representation or as part of their trademark”.
The statement added that this has occurred even in cases when the products and services do not compete.
Iceland Foods currently holds the European trademark registration for the word mark 'Iceland' for classes 7, 11, 16, 29, 30, 31, 32, and 35.
The government's challenge at the European Union Intellectual Property Office (EUIPO) seeks to invalidate this registration, on the basis that the term is “exceptionally broad and ambiguous in definition”.
“Over the past years Iceland has made multiple efforts to negotiate with Iceland Foods with the hope of reaching a fair solution and avoiding legal action,” said the government.
It added: “These conciliatory efforts have unfortunately been met with unrealistic and unacceptable demands by the supermarket chain leaving Iceland with no choice but to proceed with a legal resolution to the situation.”
A spokesperson for the supermarket chain said: “We very much regret that the government of Iceland has apparently decided to take legal action over the use of the name Iceland.”
They added that contrary to the government’s assertion, the chain hasn’t received any recent approaches to “achieve an amicable resolution of this issue”.
“While we will vigorously defend Iceland Foods' established rights where there is any risk of confusion between our business and Iceland the country, we have been trading successfully for 46 years under the name Iceland and do not believe that any serious confusion or conflict has ever arisen in the public mind, or is likely to do so,” said the spokesperson.
In September, WIPR reported that a battle may have been on the horizon. At the time, a spokesperson for the Icelandic government decision explained that the claim would only be made “after full consideration of the interests of Icelandic companies and people”.
Shaun Sherlock, senior associate at law firm Potter Clarkson, said: "Iceland Foods have, over many years of trading, built up a reputation in the trademark 'Iceland' primarily as a retail store brand. As such, they claim that customers now recognise the trademark in the high street as the store and do not confuse it with the country."
He said that protecting the trademark and preventing other traders from getting too close to it in the retail sector is "vital to their business".
However, Icelandic businesses are permitted to refer to the geographic origin of their goods and services in a "fair and reasonable manner", explained Sherlock.
"Such genuine use of the geographical indicators “Iceland” or 'Icelandic', provided it is in accordance with honest practices, should not therefore conflict with any trademark rights in the word 'Iceland' held by Iceland Foods," he said.
Sherlock added that it is surprising that this dispute has escalated to this public level after so many years, but maybe relations between the parties have become a little “frosty” for some other reasons.
