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Icelandic government challenge Iceland Foods Ltd over trademark name

Iceland Foods Ltd has recently found themselves challenged by the Icelandic government over the trade mark of their company name. We consider the background of this dispute and the issues raised.

It has long been possible to register place names as trade marks, provided the name can indicate the commercial – rather than the geographical – origin of the branded products or services.  Arguably, a country name will, by definition, identify location or source but there are circumstances in which the normal geographical meaning can be conceptually displaced. This may be as the result of extensive use of the name as a trade mark or by the nature of the product.  For example, no one seeing the trade mark NORTH POLE in relation to bananas would assume that the bananas were from the North Pole.  By contrast, applications to register LONDON for financial services, PARIS for perfumery, or SWITZERLAND for watches, are likely to fail due to the association between the place and the product.

Iceland Foods Ltd is well-known in the UK and beyond as a retailer of frozen foods.  It first registered the name ICELAND for retail services and food in the UK in 1994. Since then its registrations have expanded throughout the EU and beyond, for a variety of formats, goods and services.  In 2014, after successfully resisting multiple oppositions from, mostly, Icelandic companies, the company obtained a registration of the unadorned word Iceland for a wider range of products, including household electrical products.   

Icelandic and non-Icelandic companies own many registered European trade marks that include the word ICELAND as an indication of provenance.  However, the Icelandic government, together with Promote Iceland and the trade body SA-Business Iceland, has expressed its disquiet with what it sees as the effective misappropriation of the word ICELAND by Iceland Foods, with Icelandic companies being denied the opportunity to use ‘Iceland’ in connection with their products because of Iceland Foods’ earlier rights. 

A recent case at the European Intellectual Property Office saw an application to register ICELANDIC GOLD for seafood refused on the basis of Iceland Foods’ registration of ICELAND.  Indications are that the Icelandic government is considering mounting a challenge to Iceland Foods’ registrations, although it is unclear how such a challenge could succeed.  After all, the name was properly registered in accordance with current legislation and practice, and after so many years of use,including in Iceland itself, there is surely an argument that the Icelandic government has acquiesced to Iceland Food’s use of ICELAND.  

Whether or not the Icelandic government goes ahead with its challenge, this has certainly raised questions as to whether place names are able to function as trade marks.  Perhaps a change in practice is needed. Can a place name ever genuinely and consistently indicate commercial origin, even where there has been extensive use?  While names such as NORTH POLE will forever be fanciful for bananas, normal country names are more likely to hover in a distinctiveness-descriptiveness limbo. So, while it is true that Iceland as a country has no particular association with frozen foods, notwithstanding any climate-related jokes and association, neither is there a complete conceptual disconnect, and it would certainly not be unreasonable to assume that ICELAND-branded frozen peas are actually Icelandic. 

What can we usefully take from this? 

Place names make popular trade marks, but it should be remembered that descriptive use is an effective defence against trade mark infringement.  Third parties will therefore always be able to use a place name descriptively, which could indirectly but legitimately nibble away at the distinctiveness and value of the registered trade mark, particularly where the product or service is the same.   What happens if a place becomes well known for a particular product or service, or becomes incorporated in industry naming standards, but the name is already registered for that product or service?  Would the mark then become misleading or generic, and vulnerable to cancellation?  Similarly if the rights owner changes location but still uses the same trade mark? 

While current legislation and practice allow for the registration of place names as trade marks, the potential limitations of such registrations do need to borne in mind when selecting a new brand. 

This publication is intended for general guidance and represents our understanding of the relevant law and practice as at November 2016. Specific advice should be sought for specific cases. For more information see our terms & conditions.

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