Iceland wins EU trade mark battle against UK-based supermarket

In 2014 Supermarket chain Iceland Foods Ltd secured an EU trade mark for ICELAND, much to the frustration of the Government of Iceland, who’s Ministry of Foreign Affairs challenged the supermarket’s trade mark claiming it hinders companies in Iceland from trading using their country’s name or registering their products with reference to their country of origin.

Since the food chain was granted the trade mark there has been a long-running dispute between the Icelandic Government and Iceland Foods. The food chain had, on many occasions, stopped Icelandic businesses from using the word ‘Iceland’ on their goods and services and even admitted to blocking the registration for the slogan “Inspired by Iceland” which came from the Country’s Tourism board.

Eventually the country was forced to apply for an invalidation of the mark and Iceland (the supermarket) aimed to use the fact that the mark had acquired distinctiveness through use in the European Union (and even in Iceland itself) as a defence to the invalidation. However, finally, the country’s efforts to have the trade mark cancelled have been rewarded with a total invalidation of the supermarket’s trade mark.

The EU Intellectual Property Office noted that “It has been adequately shown that consumers in EU countries know that Iceland is a country in Europe and also that the country has historical and economic ties to EU countries, in addition to geographic proximity.” Iceland has been exporting multiple types of goods for years and is known to have strong ties with the EU via the European Economic Area, although not an EU member state. The Government therefore argued that the trade mark should not have been granted to Iceland Foods in the first place, and the EUIPO agreed.

Briffa Comment

Trade Marks and Geographical Indications: what’s it all about?

Geographical indications on products certify that the product originates from the region that is indicated on it. The last thing anything wants is to be told your fish comes from Iceland when really it was caught in the lake down the road from your house! So, it is important for businesses to indicate origin when exporting their goods which is why, as in this case, it becomes a problem when someone else registers a trade mark which could potentially stop them from doing that.

Trade marks give the owner of the mark exclusive rights to the use of the sign, whereas geographical indications can be used by anyone belonging within the region that is being indicated. Exclusivity to the use of the sign ICELAND is what enabled the Supermarket to stop Icelandic businesses from stating the origin of their goods as being from Iceland.

Iceland Foods have until 5 June 2019 to Appeal this decision reached by the EUIPO, and have stated their intent to do so, but for now this victory makes a big difference for Icelandic businesses and brings much relief.

Briffa are experts in all aspects of trade mark law and practice. If you would like to book a free consultation to discuss any trade mark or other intellectual property issues, please do not hesitate to contact us on 020 7096 2779 or info@briffa.com.

Written by Joshuanne Amachie, Paralegal