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18 April 2019Trademarks

British supermarket to appeal ‘Iceland’ TM cancellation

Iceland Foods, the owners of British supermarket Iceland, has confirmed that it will appeal the European Union Intellectual Property Office’s (EUIPO) decision to cancel its trademark.

The EUIPO informed the supermarket of the decision earlier this month. Cancellation of the mark came after Promote Island, a partially Icelandic state-owned trade organisation, opposed the ‘Iceland’ mark in 2016.

In a statement sent to WIPR today, April 18, a spokesperson for the retail chain said that it would be filing an appeal against the decision.

The spokesperson said: “We are disappointed by the decision of the EUIPO concerning the validity of our EU registration for the word mark ‘Iceland’. It is our view that this goes against established case law.”

The mark was registered as an EU trademark in 2014 in classes 7, 11, 16, 29, 30, 31, 32, 35, including supermarkets.

Icelandic authorities decided to take legal action against the supermarket in 2016 through Promote Island, and SA Confederation of Icelandic Enterprise, which represents Icelandic businesses.

The country sought the invalidation of the mark on the grounds that it that the ‘Iceland’ mark is “a well-known geographical term” as well as “generic”.

While the office initially found in favour of the supermarket, this decision was overturned last month on appeal from Promote Island.

In its decision, the EUIPO’s Cancellation Division found that the supermarket had failed to provide sufficient evidence that its mark had acquired distinctiveness in all of the relevant territories, including Malta, Sweden, Denmark, Finland and the Netherlands.

In a statement issued on Saturday, April 13, the Icelandic foreign minister Gudlaugur Thór Thórdarson said he “applauded” the decision to cancel the mark.

“It is contrary to common sense for a foreign company to be able to appropriate the name of a sovereign state as was being done in this case”, the minister said.

Iceland’s foreign ministry added that consumers were likely to associate the mark with “the country of Iceland for all goods and services the registration is claimed for”.

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