Iceland v Iceland Foods Ltd

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Iceland v Iceland Foods Ltd is an ongoing legal dispute between the Icelandic government and the British supermarket chain Iceland Foods over the trademark, intellectual property rights, and use of the name "Iceland".

Contents

Background

Trademark law already mandates some strict restrictions based on nationality in accordance with Article 3(2) of the EU Trademark Directive and Article 6 of the Paris Convention in that national flags and emblems cannot be registered as trademarks. However, there is no obstacle in law to stop the name of a country becoming a trademark itself. [1]

Iceland Foods is a British supermarket chain founded in 1970 by Malcolm Walker and Peter Hinchcliffe in Oswestry, Shropshire, England. Its name is derived from its main offering, frozen food. Iceland Foods first applied to the European Union to trademark its name in 2002, and after several attempts was finally granted it in 2014, despite the opposition of the country of Iceland. [2]

In 2015, Iceland Foods attempted to stop the trademark "Íslandsstofa" ("Inspired by Iceland" in Icelandic) from being branded on Icelandic groceries. [3] It was initially assumed this was because the trademark was its own commercial entity, but the neutral wording of the phrase suggested that Iceland Foods was in fact objecting to the simple use of the name "Iceland". [4] The Icelandic government accused Iceland Foods of engaging in abusive behaviour by trademarking the name of the country, and of "harass[ing] Icelandic companies and even the Icelandic tourism board" by pursuing legal action against Icelandic companies which use the name of their country in their trading names. [5]

Details

After considering legal action in September 2016, [6] in November 2016, the Icelandic government filed a legal challenge at the European Union Intellectual Property Office (EUIPO) to have the company's trademark invalidated "on the basis that the term 'Iceland' is exceptionally broad and ambiguous in definition, often rendering the country's firms unable to describe their products as Icelandic". [7] The Iceland Magazine noted that "Iceland Foods was founded in 1970, but only acquired the Europe wide trademark registration of "Iceland" in 2005. According to the Sagas Iceland, the nation,[ sic ] was established in 874. It is an insult to common sense to maintain that the supermarket chain has a stronger claim to the trademark than the country". [5]

In response the supermarket responded by stating that they regret the country's decision to take legal action and that "do not believe that any serious confusion or conflict has ever arisen in the public mind, or is likely to do so." [8] Furthermore, they had also accused the Icelandic government of being unwilling to negotiate a settlement despite their best attempts to do so and that the government made "unrealistic and unacceptable" demands. [9]

In April 2019, The EUIPO invalidated the Iceland trademark. [10] The ruling stated that the supermarket chain founded in 1970 "cannot reasonably trademark the name of a country that has been around since the 9th century". [11]

On 9 September 2022, the EUIPO's Grand Board of Appeal held another hearing regarding the cancellation of the trademark, [12] and the supermarket decided to return to court over the matter appealing the decision made in 2019. [13] Iceland Foods' managing director Richard Walker said the supermarket will "vigorously defend its intellectual property rights", [14] but in December 2022 the court reaffirmed the previous court's sharp limitations on Walker's use of "Iceland". [15]

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References

  1. ↑ McDonagh, Luke (30 November 2016). "Iceland v Iceland: The bitter trademark dispute erupts". The Independent.
  2. ↑ Goldfingle, Gemma (10 September 2022). "Iceland v Iceland – the rematch: Supermarket and country back in court over trademark". Retail Gazette.
  3. ↑ Jarvis, Shane (11 September 2022). "Iceland the supermarket and country in court battle over name". WalesOnline.
  4. ↑ Talland, Sarah (12 September 2022). "The next round in the trade mark battle between Iceland v Iceland". Potter Clarkson.
  5. 1 2 "No solution in sight in absurd trademark dispute between Iceland and UK supermarket". Icelandmag. 10 May 2017.
  6. ↑ "Iceland supermarket's battle with country over name". BBC News. 23 September 2016.
  7. ↑ Butler, Sarah (24 November 2016). "Iceland government challenges retail chain Iceland over name use". The Guardian. Retrieved 24 November 2016.
  8. ↑ Grandhi, Kedar (25 November 2016). "Iceland government takes legal action against UK supermarket chain Iceland Foods". International Business Times.
  9. ↑ "Iceland launches legal challenge over supermarket name". BBC News. 24 November 2016.
  10. ↑ George, Andrew (12 April 2019). "Iceland wins EU trademark battle against United Kingdom-based supermarket chain". ABC News Australia. Retrieved 9 November 2019.
  11. ↑ Fontaine, Andie Sophia (9 September 2022). "From Iceland — Iceland (The Country) In Court Against Iceland (The Store) Again". The Reykjavik Grapevine.
  12. ↑ Montebello, Leah (11 September 2022). "Tussle over Iceland: Supermarket's trademark row with country continues". CityAM.
  13. ↑ Tugby, Luke (12 September 2022). "Iceland takes Nordic nation to court again in trademark row". Retail Week.
  14. ↑ Parr, Jacqui (13 September 2022). "Iceland vs Iceland naming dispute: Richard Walker speaks out". Grocery Gazette.
  15. ↑ Jones, Stephen (22 December 2022). "Iceland Foods loses appeal in 'Iceland vs Iceland' trademark dispute". The Grocer . Retrieved 17 October 2023.
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