Iceland (country) v Iceland (supermarket) – the trade mark saga continues

Author: Anastasia Osipovich

Iceland Foods Ltd is a UK retailer of frozen foods operating its Iceland stores in the UK and across Europe, including Ireland, Germany, Malta, Spain, Portugal as well as in [ahem] Iceland.

The county of Iceland is known for its dramatic landscape, northern lights and volcanoes. A legal eruption between the UK retailer and the country of Iceland has recently resumed, with an oral hearing held by the Grand Board of Appeal of the European Union Intellectual Property Office (the ‘EUIPO’) concerning invalidity claims against ICELAND registrations of Iceland Foods Ltd.

Background

The British supermarket chain was founded in 1970 by Sir Malcolm Walker, whilst, according to the local Sagas, the story of the Icelandic nation goes back to 874 AD.

Iceland Foods filed its EU trade mark application for the word mark ICELAND in 2002, covering a broad range of goods and services primarily focused on food and drinks, household items and retail services of various products. Following several oppositions from Icelandic entities, registration was finally granted in 2014. In 2013, the retailer also applied for a stylized version of the mark featuring its logo against red-to-yellow gradient background. The stylized mark also matured into registration in 2014.

However, after Iceland Foods sought to prevent use of branding featuring the word Iceland by Iceland-based entities, the Icelandic Ministry for Foreign Affairs, as well as other Icelandic organizations, decided to challenge validity of the supermarket’s registrations, claiming that the trade marks should not have been registered in the first place.

Accordingly, in 2019 the EUIPO issued decisions confirming that the marks were invalid. In its ruling the EUIPO Cancellation Division held that the descriptive designation ICELAND would be seen by the public as indicator of the place of origin of the goods and services and stating that “the mark conveys obvious and direct information regarding the geographical origin of the goods and services in question, and in some cases, the subject matter of the goods as well”.

Recent developments

The decisions have been appealed and referred to the EUIPO’s Grand Board due to the case’s importance and special circumstances. After the first oral hearing held on 9 September 2022, where the issues of the alleged descriptiveness and non-distinctiveness of the word and figurative ICELAND marks were raised again, the future of Iceland Food shop names is yet to be decided.

These developments are particularly uncommon as very few cases ever get an oral hearing at the EUIPO, or are referred to the EUIPO’s Grand Board. The hearing has provided the parties’ with a unique opportunity to discuss the factual and legal arguments at issue as well as to cross-examine each other’s witnesses. The hearing was open to the public with nearly a thousand attendees joining the online transmission of the proceedings. The Grand Board is now to give its much-anticipated ruling on this matter.

The UK stores’ managing director Richard Walker has promised that it will continue to “vigorously defend its intellectual property rights“. On the other hand, the Icelandic government is determined that justice will be on their side. If Iceland, the country, were to lose, “it would mean that Icelandic companies could possibly not use the word Iceland in their trade marks to designate the products they are selling”, said Margrét Hjálmarsdóttir, an attorney at the Icelandic Intellectual Property Office.

Comment

It is likely that the Iceland trade mark saga will continue for a while, and we will be closely monitoring further developments around this case.

The outcome of this dispute will undoubtedly shed [northern] light on the issues of use and registration of geographical terms and provide guidance for choosing brand names to businesses and their advisors.

 


Category: News | Author: Anastasia Osipovich | Published: | Read more

Tags:

Categories

Archives