Iceland: trademark and/or country?

In the past few years an interesting trademark battle has sprung up around the name Iceland.

On one side is Iceland Foods, a supermarket chain that has been operating as the United Kingdom’s leading frozen food specialist under the name ICELAND for fifty years. On the other is the government of Iceland, which insists that the name of a geographical location such as Iceland cannot be claimed as a trademark.

The supermarket chain registered its ICELAND logo as a European trademark. The government of Iceland filed a cancellation action against it, arguing that the word Iceland could not be coined as a trademark for food products. The fact that such registration would enable Iceland Foods to take action against any trademark containing the word ICELAND is undesirable and also inaccurate, because as a country, Iceland is also known for its food products (fish, beer, water etc.). They argued that the word ICELAND could therefore not be registered as a trademark and everyone must be at liberty to use it freely. This meant that Iceland Foods’ trademark could not be seen as distinctive and must be declared invalid. The Icelandic government also claimed that the trademark was misleading, as the products sold did not actually come from Iceland, and that furthermore, Iceland Foods was acting in contravention of the law by taking action against other parties using Iceland in the descriptive sense; although they were allowed to do so.

Iceland Foods did not agree with these arguments. It argued that ICELAND is the name of a well-known supermarket chain specialising in frozen food and that, as a country, Iceland is not particularly famous for food production. They further stated that in the event the trademark ICELAND is considered to be a descriptive trademark, the trademark has obtained distinctiveness through use.

In the first instance, the European Trademarks Office agreed with the Icelandic government that although Iceland is not currently known for its food exports, the country is very well known and it is not unlikely that its name could be associated with its food products. The European Trademarks Office therefore came to the conclusion that the name ICELAND must remain free from trademark protection. One exception to this is acquired distinctiveness, which, according to the European Trademarks Office, can also apply to geographical names, but Iceland Foods had not submitted sufficient proof of this.

Iceland Foods appealed against this decision and both parties pulled out all the stops. There was a hearing (something quite unusual in proceedings at the Trademark Office), experts were consulted and a market research study was submitted. The long-awaited decision, numbering no fewer than 56 pages, has finally been released. We won’t discuss all 217 considerations here, but to cut a long story short, the appeal was declared unfounded. The Appeals Department reiterated all the arguments put forward by the European Trademarks Office: the name Iceland is very well known and is generally perceived as the name of a country, not as a trademark, so the trademark ICELAND lacks the ability to distinguish products. Also, although the ICELAND trademark is certainly well known in Ireland and the United Kingdom, there is insufficient evidence to assume that it is also well known in other European countries. In other words, the claim that ICELAND has acquired a distinctive character through use was also rejected.

If you would like to delve deeper into this matter, the decision is well worth reading, and we would be only too happy to send it to you. It is likely that this case will be taken to the Court of Justice, so this decision is probably not the end of the story.