Icelandic authorities have welcomed the ruling by the European Union Intellectual Property Office (EUIPO) that the wordmark registration of “Iceland”, which had been registered in the European Union by the British retail chain Iceland Foods Ltd., is invalid in its entirety. The enterprise has been given two months to appeal the decision.
Three years ago, the Icelandic authorities, Promote Iceland and SA Confederation of Icelandic Enterprise decided to take legal action against Iceland Foods Ltd., which in 2014 registered the word mark “Iceland” with the European Union Intellectual Property Office. Iceland demanded the invalidation of this registration by Iceland Foods Ltd. on the basis that the mark in question is a well-known geographical term and also that the mark “Iceland” is generic and not distinctive and should never have been registered.
“I applaud this decision even though it is not altogether surprising to me, since it is contrary to common sense for a foreign company to be able to appropriate the name of a sovereign state as was being done in this case. This is an incremental victory in a case that is very important for Icelandic export enterprises. Our country is known for quality and sustainability and therefore there is value in referencing to the origin of Icelandic goods”, stated Gudlaugur Thór Thórdarson, Icelandic Minister for Foreign Affairs.
The decision that was issued on April 5 upheld all of the Icelandic entities' claims in full. It has been sufficiently demonstrated that consumers in the EU countries are aware that Iceland is a European country and likewise that the country has strong historical and economic ties to the EU countries, as well as being geographically close to them. Consumers therefore associate the mark with the country of Iceland for all goods and services the registration is claimed for, or are likely to do so in the future. The mark is therefore first and foremost descriptive of geographical origin and does not fulfil the requirement for distinctiveness, which is one of the main prerequisites for the registration of a trademark.
Iceland Foods Ltd. still retains its word-and-image mark its “logo” which is registered in Europe and elsewhere, and is able to continue to trade under the name. The deadline of Iceland Foods Ltd. to appeal the decision to the Board of Appeal expires on June 5th. This ruling has no bearing on the wordmark in the UK, where it is registered with the UK IPO.
Iceland was forced to take this legal action after Iceland Foods pursued and won legal action against multiple companies from Iceland seeking to use their country´s name as a source of identity or branding on the basis of the company’s ownership of the wordmark ‘Iceland’. These cases were pursued even in incidences when the products and services did not compete.