Originally published by Peggy Keene.
Recently the European Union Intellectual Property Office ruled in favor of the nation of Iceland against a food retailer, effectively cancelling the ICELAND trademark registration granted to Iceland Foods in 2014. Iceland Foods and the nation of Iceland have been battling over rights to the trademark for ICELAND in connection with a variety of different goods and services since 2016.
The Nation Claims Victory as Iceland Foods Prepares Appeal to Maintain Rights to ICELAND Trademark
This marks an important victory for the Icelandic nation as it has complained that the 2014 decision inhibited it from promoting important national businesses and branding that would contribute to tourism and positive national branding.
Iceland Foods, however, has already said that it will appeal the decision, having held rights to the ICELAND trademark in the United Kingdom since 1970. Losing rights to the name, Iceland Foods argues, would detrimentally impact its ability to trade and conduct business as well as potentially put its employees’ jobs in peril. Currently, the food retailer employs almost 25,000 employees across 800 stores. Further, Iceland Foods plans to argue that the European Union Intellectual Property Office’s recent ruling goes against established case law.
Iceland Argues ICELAND Trademark Registration Should Have Never Been Granted in the EU
Similar to a federal trademark registration in the United States, holding a European Union registration gives the rights holder the ability to assert those trademark rights against others across the European Union, even if the majority of the business is only conducted in one nation-state of the European Union. But what happens when the brand owner must go against a nation-state that is not even part of the European Union? That is what happened here as Iceland is not part of the European Union.
Because Iceland is not part of the European Union, it does not hold trademark rights with the European Union Intellectual Property Office. Despite this, however, the nation argued that the ICELAND trademark should never have been granted to the food retailer in the first place, because brands should not be allowed to trademark and hold rights to the name of nations, regardless of whether that nation is a member-state of the European Union.
Nation Names as Trademarks
Granting a company rights for use of a nation’s name would be the equivalent of allowing companies to hold trademark rights to “U.S.” or “America.” Doing so would only allow one American company to advertise across the European Union using that trademark while all other American companies could be liable for trademark infringement if they attempted to market themselves or trade across the European Union. It follows then, that giving one company so much power would severely inhibit the United States overall in doing trade in Europe.
Iceland has also argued that granting the food retailer rights to the ICELAND trademark has led to Iceland Foods abusing its rights and threatening a variety of Icelandic companies, and even the Iceland tourism board itself. The nation has complained to the European Union Intellectual Property Office that the trademark granted to Iceland Foods led to the retailer blocking registration of an advertising campaign for tourism in Iceland called “Inspired by Iceland” even though the two clearly fall within different marketing channels. Lastly, although the retailer has been around since 1970, Iceland, the nation, had strongly asserted that it is common sense that they have the stronger claim to the trademark as the nation was established in 874.
What Should Trademark Lawyers Take Away?
Different nations have different laws about what they accept as valid and acceptable trademarks in their jurisdiction. Most jurisdictions have some type of law/regulation for protection of official names of states/nations. However, they may differ in requirements for additional distinctive words in a mark, required disclaimers, misleading and deceptiveness concerns, as well as acquired distinctiveness. For these reasons, it is important companies consult counsel experienced in any jurisdictions they intend to enter, to help avoid later costly issues that could potentially prevent a mark’s use in a given country.
In the case at hand, since Iceland isn’t a member state of the European Union, the ultimate decision on the matter of allowing Iceland Foods the ICELAND trademark registration in the EU will be an important decision to be aware of.
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