Will Iceland's EU trade mark end up on ice?

The supermarket

As the Northern European weather turns to a cold chill, a trade mark dispute is just starting to heat up...

Iceland is known for its chilly temperatures and occasional financial difficulties.  It is also the name of a Nordic country.

You might think that a supermarket which primarily sells frozen foods would not be readily confused with a country which is known (in no particular order) for Bjork, hot springs, Northern Lights* and the pirate party.  But a recent war of words (the main word being "Iceland") has erupted like a geyser and once again brought trade mark law to the mainstream media's attention.

The country

The protagonists

Iceland has been trading in the UK for 46 years.  Its trade mark portfolio includes an EU trade mark for ICELAND (filing date: 19 April 2002) and its current logo (filing date: 12 February 2013). Although the word mark was filed in 2002, it was only granted in 2014 following five oppositions including from Icelandair.

Whilst Iceland is primarily known for being a UK company, according to that most reliable of online sources, it also has stores in Spain (14), Ireland (1), Czech Republic (6), Malta, Portugal and Libya (1 each) and… Iceland (3).

Iceland is the most sparsely populated country in Europe.  It was first settled around 800 CE and has at various times been owned by its Nordic neighbours, Norway and Denmark.  It is known for its natural beauty, biodiversity, unusual geology and volcanic activity and, more recently, its football team.  It is not a member of the European Union (EU) but is part of the European Economic Area (EEA) and European Free Trade Association (EFTA).

Fun with Flags: Iceland edition

Origins of the dispute

The dispute appears to have arisen because, back in September 2015, Iceland opposed Íslandsstofa (Promote Iceland)’s attempt to register INSPIRED BY ICELAND as an EU trade mark (EUTM) for, amongst other things, meat, some frozen food, coffee, tea, alcoholic beverages (i.e. all things which the supermarket sells on a daily basis).  As a result of this opposition, the Icelandic government has taken the unusual attempt of attempting to, in the words of the media, “sue” the UK company.  This has taken the form of a cancellation action against the word mark ICELAND which was filed on 24 November 2016.

There is speculation that the dispute has been partially fuelled by the company’s successful piggy backing off the Icelandic football team’s unexpected success in the world cup. This follows a massively successful social media campaign for the supermarket following the Icelandic football team’s summer success in Euro 2016.

The supermarket appears to be slightly nonplussed by this turn of events.  According to the BBC founder and chief executive Malcolm Walker recently said "We have no real idea why this has suddenly become such a major problem for Iceland (the country). Iceland Foods had Icelandic majority shareholders and Icelandic representatives on its board for seven years to 2012. At no point in all those years did any representative of Iceland (the country) raise the slightest concern about our company's branding".

Will the lights go out on Iceland's trade mark?

The company acknowledged that it had blocked an attempt to register "Inspired by Iceland", but it had not known it came from the Icelandic government.

The cancellation action appears to be centred on descriptiveness and lack of distinctive character on the basis that Iceland is only a description of geographical origin.  Whether these arguments are several decades too late remains to be seen.

Will relations thaw with time?  Will Iceland Let it Go?  Let's see what 2017 has in store...

* not to be confused with Northern Lights, the first in Philip Pullman's His Dark Materials trilogy.