“Unless Iceland Foods can come to an agreement with the Icelandic government, this is a battle that could last years. The food company is unlikely to want to share the exclusivity they have enjoyed in the term, by virtue of this European trademark registration and decades of use, and they would certainly not want to open the door to non-Icelandic opportunists who might try to ride upon the success of their British brand in the EU.”
It was confirmed on Thursday that the Icelandic government had started proceedings to declare the supermarket chain’s European Union Trade Mark invalid. The European Union Trade Mark covers a range of goods including freezers and microwaves, paper articles, food such as meat, vegetables and milk products, coffee, tea, confectionery and fruit, beers and non-alcoholic beverages and also the operation of its stores and its online shop.
A registered trademark is a powerful monopoly right, and currently, Iceland Foods enjoys a monopoly over the “ICELAND” brand in the EU. With its registered trademark, Iceland Foods is entitled to prevent other businesses from using the brand name “ICELAND” or similar names, on the same or similar products, in the EU. Iceland Foods has been successful in preventing a number of companies from using the word, including some Icelandic businesses, although trademark law does allow some checks and balances, for instance, it would allow an Icelandic business to use the term “ICELAND” to describe the origin of the product, provided such use is purely descriptive.
The Icelandic government is looking to open this up so that Icelandic businesses are free to use the term “ICELAND” as a brand. Iceland Foods stands in the way.
Now that the proceedings have been filed, Iceland Foods must defend its trademark in order to enjoy continued registered protection. To retain the trademark, it will need to argue that the mark is distinctive for the products and the retail store and that it will not cause the public to believe that products branded “ICELAND” actually come from Iceland.
On the back of decades of continued use, Iceland Foods should be able to retain some form of trademark protection, but its success will depend on the strength of its arguments and the weight of supporting evidence.
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