Iceland versus Iceland battle looms

The Icelandic government confirmed that it has started proceedings to declare British supermarket chain Iceland Food’s European Union (EU) trade mark invalid.  The UK retailer, founded in 1969, sells a range of groceries with an emphasis on frozen foods and prepared meals.

The EU trade mark covers a range of goods including freezers and microwaves, paper articles, food such as meat, vegetables and milk products, coffee, tea, confectionery and fruit, beers and non-alcoholic beverages and also the operation of its stores and its online shop.

According to London-based patent and trademark attorneys EIP, a registered trade mark is a powerful monopoly right, and currently, Iceland Foods enjoys a monopoly over the “ICELAND” brand in the EU.  With its registered trade mark, Iceland Foods is entitled to prevent other businesses using the brand name “ICELAND” or similar names, on the same or similar products, in the EU.

Iceland Foods has been successful in preventing a number of companies from using the word, including some Icelandic businesses, although trade mark law does allow some checks and balances, for instance, it would allow an Icelandic business to use the term “ICELAND” to describe the origin of the product, provided such use is purely descriptive.

The Icelandic government is looking to open this up so that Icelandic businesses are free to use the term “ICELAND” as a brand.  Iceland Foods stands in the way.

Now that the proceedings have been filed, Iceland Foods must defend its trade mark in order to enjoy continued registered protection.  To retain the trade mark, it will need to argue that the mark is distinctive for the products and the retail store, and that it will not cause the public to believe that products branded “ICELAND” actually come from Iceland.

On the back of decades of continued use, Iceland Foods should be able to retain some form of trade mark protection, but its success will depend on the strength of its arguments and the weight of supporting evidence.

“Unless Iceland Foods can come to an agreement with the Icelandic government, this is a battle that could last years,” commented Sharon Daboul, trademark attorney at EIP.

“The food company is unlikely to want to share the exclusivity they have enjoyed in the term, by virtue of this European trade mark registration and decades of use, and they would certainly not want to open the door to non-Icelandic opportunists who might try to ride upon the success of their British brand in the EU.”

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