UK: A Tale Of Two Icelands: Inside The Dispute

Last Updated: 14 December 2016
Article by Michael Gardner

Michael Gardner takes us through the frosty depths of the ongoing trademark dispute between frozen food giant Iceland Foods and Nordic island nation the Republic of Iceland.

Iceland Foods are a well-known supermarket retailer who are best known for operating a chain of stores selling mainly frozen food.

Iceland is a well-known country situated in the North Atlantic with a reputation for cold winters.

For many years, the parties appear to have co-existed happily enough. But a distinct chill has recently come over their relationship as a result of Iceland (the country) launching legal proceedings against Iceland Foods over the use of the name "Iceland" as a trade mark. These "cancellation" proceedings were brought in the European Intellectual Property Office situated in the warmer climes of Alicante, Spain because they concern an EU-wide trade mark registration known as a "European Union Trade Mark" (EUTM). The EUTM gives Iceland Foods a near monopoly on using "Iceland" as a trade mark in relation to the provision of various goods and services. These include various types of foodstuffs, kitchen appliances and retailing services.

The EUTM

The story began back in 2002 when Iceland Foods decided to protect its brand name across the whole of the EU by applying to register an EUTM. This turned out to be quite a struggle. These days it can take as little as a few months from filing an application for an EUTM to achieving registration of a protected mark. But in the case of Iceland Foods' EUTM, it took 12 years to overcome various oppositions from competitors and to obtain the registration in 2014.

Iceland Foods already have a battery of UK trade marks and a registration for their name and logo as an EUTM. The registration of the word "Iceland" is the subject of Iceland's attack.

Such trade marks are important instruments of brand protection. The basic idea behind registering a trade mark is primarily to prevent anyone else from being able to use the same or a similar sign to the registered mark in relation to the types of goods or services for which it is registered. An EUTM is especially potent since it has effect throughout the 27 countries of the EU.

Also, not only can an EUTM be used to stop competitors trading using the same or a similar name, but such marks can be used as a basis to block others from registering marks of their own which could clash with the registered mark. Iceland Foods have thus been able to use their word EUTM for "Iceland" to try and block other traders from registering marks incorporating the word "Iceland" or variations of that word. It was apparently the blocking moves made against Icelandic businesses that may have provoked Iceland into action.

So, what is the cancellation claim based upon?

Iceland's complaint

Once a trade mark (including an EUTM) has been registered, it is still possible to invalidate it and clear it off the register if a party can show that the mark ought not to have been registered in the first place. In order to do that, it must be shown that the mark was originally registered in breach of one or more requirements of the relevant EU legislation governing such trade marks (in this case Council Regulation 207/2009 as amended).

In pursuit of its cancellation case, Iceland is relying upon a host of rather technical points of trade mark law.

These principally revolve around the fact that Iceland is the name of a geographic location (i.e. in this case a well-known country). Generally, the use of geographical locations as trade marks is prohibited by the legislation. But Iceland have sought to develop this basic objection in a number of different ways. They have variously claimed that Iceland is a mark that has no distinctive character of its own, that the use made of it by Iceland Foods is "descriptive" of the characteristics of the goods covered by the mark and even that the use of the mark is misleading because Iceland Foods'products do not come from Iceland and consumers would be deceived into thinking that they do.

Some of the arguments put forward on behalf of Iceland appear to be weaker than others. For example, the argument that Iceland is descriptive of the characteristics of the goods and services covered by the Iceland Foods EUTM is somewhat unconvincing. But when it comes to European trade mark law, stranger things have happened in Alicante. Moreover, it is only necessary for Iceland to succeed on one ground of its case in order to win.

The bad news however, is that just as it took more than a decade for Iceland Foods to register its EUTM in the first place, if the result of Iceland's action is taken on to appeal and beyond, that process could easily take every bit as long to go through all the various stages up to the Court of Justice of the EU.

Iceland's EUTM could therefore be stuck in the deep freeze for many years to come. Also, by the time the case is eventually resolved, who knows how many (or how few) countries an EUTM will cover.

This article was first published in The Global Legal Post on 8 December 2016

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.