Cartoonist in TM dispute over Icelandic football chant

An Icelandic cartoonist has discovered that he is unable to sell t-shirts featuring the word "Hú" in reference to a famous Icelandic football chant, as a similar word is already the registered trademark of Gunnar Þór Andrésson.

Hugleikur Dagsson shared his dilemma on Facebook on Friday, March 23, in a post entitled “How The Grinch stole víkingaklappið” (the Viking clap epitomised in the famous “Hú” chant).

Magnús Hrafn Magnússon, attorney at Icelandic firm Sigurjónsson & Thor, explained that “the chant became an instant symbol of national unity” when Iceland reached the quarter-finals of football tournament the European Championship in 2016. Fans of the team dressed as Vikings and performed the famous slow clap and chant to celebrate.

Dagsson has produced t-shirts which incorporate the "Hú" mark ahead of Iceland’s participation in the football World Cup in Russia this year. Sports news site Sport360 said that this is the first time that Iceland’s football team has qualified for the World Cup.

The shirts feature a stick person wearing an Iceland top, with the word "Hú" in a speech bubble.

Andrésson owns the trademark “Húh!” for use in classes 25, 32, and 33, covering products such as accessories, clothing, and beverages. His ownership of the trademark is not due to expire until 2026.

Local news outlet Iceland Review said that Andrésson works at Landspítali Hospital in Iceland.

Iceland Review explained that Dagsson’s Facebook post said he “didn’t know that it was possible to own a sound effect”, and disputed the similarity of the existing mark and his own reference to the chant on his t-shirts.

"My ‘Hú!’ needn’t bother his ‘Húh!’ We should all be able to ‘HÚ!’ together. Isn’t that what ‘hú(h)!’ is about?”, Dagsson reportedly said.

Magnússon said that the claim has caused “quite an outrage” in Iceland, as the general consensus is that the chant “should belong to the people”. He also noted that the Icelandic Trademark Act prevents the registration of any mark which is used in everyday speech.

The attorney explained that there is no official correct spelling of the chant, and the two marks in question are not identical. Neither version involved in this dispute is grammatically correct or incorrect either, as the portrayal is simply meant to present the sound made by the Viking clap.

Mohit Pasricha, head of sports at Mackrell Turner Garrett, noted that whether the registered mark is grammatically correct will not necessarily matter as trademark infringement is determined by another party’s use rather than its grammatical correctness.

Going forward, Pasricha said Dagsson can now either enter into a formal licence agreement with Andrésson or to challenge the validity of the registered mark.

Pasricha explained: “Ultimately, if Dagsson decides to continue selling the infringing material in the full knowledge that he is doing so without the registered owner’s consent, he risks formal infringement proceedings being brought against him in Iceland by the registered owner.”

According to the information available to him, Magnússon said a cease-and-desist letter has been sent to Dagsson. He noted that, should the trademark owner seek to enforce his right in the courts, he would have to deal with the media attention generated by this dispute in Iceland.

Magnússon also said a new application for the word mark “ Húh” was filed yesterday, March 26, by a third party.

Speaking to WIPR,  Lovísa Jónsdóttir, attorney at Icelandic firm Tego, said the Icelandic Football Association (IFA) has filed a cancellation request for the 'Húh!' mark. The association intends to prevent any third party from profiting off the Icelandic national team's slogan, she explained.

Jónsdóttir said: "It is the IFA’s opinion that the slogan is common and used in everyday speech, and as such it is not suitable for registration. Should the Patent and Trademark Office nevertheless maintain their position that the mark is registrable the IFA claims that they have prior rights to the slogan and should enjoy an extended protection because of the fame of the slogan."

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