Details of the case
An interesting and somewhat puzzling trademark dispute between Iceland Foods, a supermarket chain, and the country of Iceland has recently reached its ending point with the most recent decision of the Grand Board of the EUIPO in cases R1238/2019-G Iceland and R1613/2019-G, Iceland (fig.)
Iceland Foods Ltd is a British supermarket chain founded in the 1970s and headquartered in Deeside, Wales. It focuses on the sale of frozen foods, including prepared meals and vegetables. The company has more than 1000 stores in the UK and employs more than 30,000 staff. The supermarket first applied to the EU to trademark its name in 2002, and after several attempts, was finally granted it in 2014. Due to the retailer’s aggressive protection of its trademark, which consists of a country name, Iceland has petitioned to revoke the trademark Iceland.
The government of Iceland is concerned that the Icelandic businesses are unable to promote themselves across Europe in association with their place of origin. This does not come as a surprise, as country names can hold powerful branding power, and nations may use their own names for economic and cultural benefit. For the same reason, country names can also be vulnerable to misappropriation and exploitation by entities that have no connection with them. In 2016, the frozen food retailer Iceland sent a delegation to Reykjavik to meet with the Icelandic government meeting with Iceland’s foreign ministry in an attempt to thaw relations and resume a longstanding “peaceful coexistence”.
The case saw new developments when the country of Iceland won a ruling in 2019 from the EUIPO that invalidated the exclusivity of Iceland Foods’ EU trademark registration. However, the chain store Iceland has appealed this decision, and the case was moved to the Grand Board of Appeal of the EUIPO. In December 2022, the Grand Board rejected Iceland Foods’ appeal against this decision, meaning its EU trademark registrations will be cancelled.
Can country names be registered as trademarks?
Is this the case of Iceland Foods being too aggressive in its trademark protectionism, or is the Icelandic government bullying smaller retailers? And why has EUIPO granted a trademark on the name of a country to a single company in the first place? This lawsuit poses a number of interesting questions for both trademark practitioners and brand owners wishing to incorporate real-world locations in their trademarks.
To be eligible to register a trademark, it must be sufficiently distinctive and must not be descriptive regarding the goods or services claimed. During the initial examination, the EUIPO ruled that in the case of Iceland Foods' application, this distinctiveness was only lacking for specific goods such as "fish, fish products and living animals." This decision can be interpreted in the sense that the consumer would be more likely to relate Iceland with certain products, such as fish products, and less with others, making it a sufficiently distinctive term for certain goods and services. Iceland Foods used this argument and claimed that the country of Iceland, in the minds of EU consumers, was only known for producing a small range of goods (none of which fell into goods and services their trademarks were attached to). Based on this decision, trademarks containing geographic terms can generally be registered if the relevant place is not well-known for the goods and services for which the trademark is being applied.
And although the registration is not impossible, it remains hard to achieve as a trademark consisting solely of a country name in most cases would be ruled out as too descriptive. Brand owners will encounter other issues if the assets they wish to trademark include country flags and similar emblems due to multiple legislative limitations. Other brands should consider adding more words or graphic elements in order to increase distinctiveness and, therefore, chances of trademark registration. It's therefore strongly recommended to get a legal opinion about the overall eligibility of your trademark before attempting to register it. In Trama, we offer a free lawyer's check with a 24-hour response guarantee that evaluates the distinctiveness of your trademark and other criteria necessary for a successful registration.
