Iceland v Iceland: Can you be frozen out of trade marking the name of a country?

Background

After a long running battle, British supermarket chain, Iceland Foods Limited (“Iceland Foods”), has lost its appeal to secure a trade mark for the word “ICELAND”.  In 2014, Iceland Foods secured the EU trade mark.  However, in 2016 the Icelandic government challenged this and argued that businesses within Iceland would not be able to market their products as products from Iceland.  In 2019, the EU Intellectual Property Office (EUIPO) invalidated the 2014 registration of the ICELAND mark entirely.  Iceland Foods appealed the EUIPO’s decision arguing that ICELAND had acquired distinctiveness through almost 50 years of use, but the EUIPO Grand Board has now rejected that appeal.

Reasoning behind decision

Iceland Foods filed numerous arguments based on the use of geographical names.  They claimed that consumers were unlikely to confuse the ICELAND mark as referring to the origin of goods and services given that they had acquired distinctiveness through over half a century of use.  When considering Iceland Foods’ geographical arguments in relation to ‘Alaska’, the Grand Board of Appeal rejected the argument stating: “Iceland is a sovereign state whereas Alaska is a region of the United States… [and] over three-and-half times further away from mainland Europe” as well as Iceland being “a member of the [EEA] and therefore economic trade links with the EU are far greater than with Alaska”.  They were of the opinion that Iceland Foods’ application was similar to the applications for ANDORRA and SUEDTIROL and those registrations were also refused.

Comment

The EUIPO Grand Board has not ruled out that country names cannot be used as trade marks: and there is no legislation stating this.  However, the Board has expressed that registering a country name as a trade mark must be “approached with caution”. But is the position with other geographical place names, as opposed to actual countries, as clear-cut?  The EUIPO Grand Board’s rejection of Iceland Foods’ ‘Alaska’ argument mentioned above suggests not for non-sovereign states with lesser links to the EU, whereas our recent update that discussed the Eden Project’s dispute with a small garden business over its name ‘Gardens of Eden in Penrith’ suggests that the use of a district name could be taking trade mark protection too far.

Our Disputes and Corporate & Commercial teams are highly experienced in advising businesses on intellectual property issues including trade marks.  If you would like advice about protecting your intellectual property, please get in touch with Jamie McConnell.