The supermarket Iceland is back in court with the country Iceland as the trademark row over its name continues.
The UK firm first applied to the European Union to trademark its name back in 2002, which the European Union Intellectual Property Office (EUIPO) finally granted back in 2014.
The country later disputed this, and in 2019 won a ruling from the court to invalidate exclusivity of Iceland Foods’ EU trademark registration.
“I celebrate this result, although it in no way comes as a surprise to me, as it goes against common sense that a foreign company could file exclusive rights on the name of a sovereign country,’” foreign minister Guðlaugur Þór Þórðarson said at the time.
In a fresh turn of events, EUIPO’s Grand Board of Appeal held a hearing on Friday over the Icelandic Ministry for Foreign Affairs attempts to cancel two EU trade mark registrations in the name of Iceland Foods.
Lawyers for the country said winning the case is crucial for domestic firms and their ability to describe products as Icelandic.
Meanwhile, representatives for Iceland Foods argued that the names of countries should be treated no differently to smaller geographic locations such as cities; the supermarket’s team pointed to geographic terms such as ‘Liverpool’, which has a population larger than Iceland and has been registered as trade marks.
Chartered trademark attorney at IP law firm HGF Lee Curtis told City A.M. that from the Icelandic government’s perspective, this is an “emotive subject”.
Curtis said the argument from the shop’s perspective is “simpler”.
“ICELAND is a brand they have used for decades why should they not be able to register it, if in their eyes Iceland is really only well known for fish and seafood which they are not attempting to register, a position that the Icelandic government strenuously disagree with,” he said.
It is understood that the case will not be decided until next year.
Managing Director of Iceland Foods Richard Walker told City A.M. in statement: “We have traded as Iceland in a large number of EU countries and in non-EU countries, including Iceland itself. We had sincerely hoped that we would be able to avoid last week’s hearing and reach an amicable agreement.
While we will vigorously defend Iceland Foods’ intellectual property rights where there is any risk of confusion between our business and those of another business, this would not restrict Icelandic producers describing goods or services as coming from Iceland.”
He added: “We have been trading successfully for over 50 years under the name Iceland and do not believe that any serious confusion or conflict has ever arisen in the public mind between our business or Iceland the country, or is likely to do so. Iceland Foods is proud of its legacy, serving customers who rely on us for affordable products, particularly in times when the cost of living is increasing at an alarming rate.”