Stop Hitting Yourself: Iceland v. Iceland
Trademark is vital to the success of a business, protecting the recognizability and distinctiveness of a business’ name and preventing imitators from siphoning cash away from the original firm. But sometimes, quibbles over names, likenesses and branding can verge on absurd and drag on for years.
The name Iceland has become synonymous with cold, fish and volcanic activity, making news with the latter recently. Situated on the Mid-Atlantic Ridge and over the meeting of two tectonic plates, Iceland is renowned for its seismic and volcanic activity, as well as its bitter cold winters. When thinking of the name “Iceland,” most of the world rightfully associates it with the country above, not a frozen food market. But a court had to decide that very question after a protracted legal battle over the name and trademark rights to it.
In Iceland v. Iceland Foods Ltd., the nation petitioned the European Union Intellectual Property Office (EUIPO) to revoke the respondent frozen food market’s trademark on the name “Iceland.” The Icelandic group Baugur owned the company before its purchase by entrepreneur Malcom Walker in 2014 and acquisition of the trademark to “Iceland.” In 2016, the legal tussle between the company and state began after the grocer tried to stop the phrase “Inspired by Iceland” from appearing on the country’s groceries in the United Kingdom and won several suits against Icelandic companies using the name in branding. The company publicly said it did not know it was, in fact, opposing the country Iceland when it blocked the phrase. The nation feared that its own name would not be available to use on Icelandic goods, while the grocer said it could scarcely be mistaken for the centuries-old country.
The Icelandic government said it attempted to negotiate with the company to avoid litigation but the store’s demands were unreasonable. The company said it had received no entreaty from the country, and that it would have preferred to avoid litigation but was prepared to defend its use of the name. In 2016, Iceland (the country) filed suit, also against Iceland (the store). It took three years for the EUIPO to decide that the country was right. In 2022, the company hauled the country into court again, appealing the judgment of the EUIPO before its grand board. Though the board affirmed the decision in December of the same year, it left room for countries’ names to be used as a trademark, depending in part on the country’s proximity to the EU and consumers’ familiarity with the name.
Now, the trademark’s registration is pending cancelation, according to the EUIPO, and onlookers are left with a silly story about litigation and a pertinent question: how did this take so long to figure out? Though courts exist to resolve such issues, perhaps they should have more room to referee disputes like Iceland’s on the basis of common sense before devoting years to the question.
Article Written by James Whitlow
Sources:
https://www.walesonline.co.uk/news/uk-news/iceland-supermarket-country-court-battle-24987822
https://euipo.europa.eu/eSearch/#details/trademarks/002673374
You May Also Like
