Iceland vs Iceland – Country vs Company
In 2014, Iceland, the well-known UK based supermarket chain (“Iceland Food”), was granted an EU trademark in respect of the word “Iceland”, the effect of which gives Iceland Food a monopoly over the use of the word “Iceland” throughout the EU in respect of certain goods and/or services.
The government of the country Iceland (“Iceland the Country”) has commenced legal proceedings to cancel the registered trademark at the EU Intellectual Property Office (“IPO”) on the grounds that it is restricting companies native to Iceland from promoting and selling their goods in the EU as a result of Iceland Food’s trademark in the EU.
Although the Country is not a member of the EU it is a major exporter of frozen fish and seafood to the EU. Companies such as “Icelandic Gold”, an Icelandic fish company, and “Clean Iceland”, a seller of specialist Icelandic products, have both been reported as encountering problems when trying to do business in the EU as a result of Iceland Food’s registered trademark.
The Icelandic government has stressed that its end goal is not for Iceland Food to have to change its name in respect of its core business, but rather it seeks to end the monopoly position which Iceland Food has in respect of the word “Iceland” so as to enable native businesses of the country to also use the word Iceland for goods and services similar to those of Iceland’s core business.
There is a significant factor which may go against the Country, however. The application to register the trademark was originally filed by Iceland Food in 2004. The application was subjected to a rigorous 12 year opposition process before finally being granted. During this opposition process the EU IPO weighed up the pros and cons of allowing the application, with particular emphasis on the risk of confusion amongst customers in relation to the trademark and any prior existing marks. It seems unlikely that the Icelandic government will be able to put forward any grounds for cancellation of the trademark which were not considered during the 12 year opposition period.
Interestingly, under article 3(2) of the EU Trademark Directive, registration of national flags or emblems as trademarks is prohibited. There is, however, no restriction on the registration of a country’s name as a trademark.
It has been reported that representatives of Iceland Food have visited the Icelandic government in an attempt to resolve this dispute amicably. The outcome of those discussions has not yet been publicised but it is hoped that an agreement can be reached to allow Iceland the company and Iceland the Country to co-exist in a similar market and both take advantage of their respective reputations within that market.