Iceland secures win against UK supermarket
Dispute over word mark has been ongoing for six years | Litigation centred on logo in white on a background of red, orange and yellow | Closely watched case expected to offer clarity | Bird & Bird.
Iceland (the country) has secured a trademark victory over British supermarket Iceland Foods, in a closely watched dispute before the EU Intellectual Property Office (EUIPO).
In two decisions handed down on December 15, the EUIPO’s grand board of appeal concluded that two Iceland Foods EU trademarks containing ‘Iceland’ were invalid as they would be "perceived by the relevant public as an indication that the goods and services so designated originate from Iceland”.
The decision confirmed the findings of the EUIPO’s Cancellation Division in 2019, which had held 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.
Promote Iceland (a partially Icelandic state-owned trade organisation), The Icelandic Ministry for Foreign Affairs and SA-Business Iceland (which represents Icelandic businesses) had opposed Iceland Foods’ word mark ‘Iceland’ back in 2016.
Icelandic Trademark Holding, which is owned by the Icelandic state, had opposed the ‘Iceland’ logo which consists of the word Iceland in white on a background of red, orange and yellow.
According to the Icelandic companies the trademarks were invalid because the ‘Iceland’ mark is “a well-known geographical term” and is “generic”.
Commenting on the decision, Peter Brownlow, partner at Bird & Bird, said:
“The decision which runs to over 60 pages seeks to rationalise the case law on when a term is not registrable because of its geographical descriptive nature, and identify the factors and principles to be applied in such cases.”
He added: “This will provide some clarity in this area although given the importance of the brand to Iceland Foods it is possible that this is not the last we will hear of this dispute.”
In last week’s decision, the appeal board held that the term ‘Iceland’ has acquired distinctiveness in the UK and Ireland so that at least a significant proportion of the relevant public would identify the products or services concerned as originating Iceland Foods.
However, said the appeal board, there was no evidence at all regarding Sweden, Denmark, the Netherlands and Finland (territories where ‘Iceland’ will also be understood in a descriptive sense).
The board also noted that Iceland Foods had not “convincingly claimed, or, more importantly, filed any evidence to support the view that the high level of recognition of its trademark” among the public in the UK and Ireland could or should be extrapolated to the remaining relevant territories.
It added that even if a country name does sometimes function as a trademark, the matter must be approached with caution.
“While there appears currently to be no normative prohibition in the EU on registration of country names as trademarks, it may nonetheless be open to question whether, irrespective of the goods or services at issue, it is in the public interest to allow monopolisation of the names of EU and EEA member states that are highly familiar geographical locations to the relevant European public,” said the board.
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