Iceland Foods loses ‘Iceland vs Iceland’ trademark court case

Iceland Foods has lost its ongoing legal battle with the country Iceland over the frozen food retailer’s trademark name after the EU Intellectual Property Office (EUIPO) dismissed its appeal.

The long-running dispute saw the retailer win an EU trademark registration in 2014, only for the Icelandic government to win a ruling in 2019 which invalidated the retailer’s claim. It claimed the move would stop the country’s businesses from describing their products as Icelandic.

Iceland Foods’ appeal against this decision has now been rejected by the EUIPO Grand Board, meaning its EU trademark registrations will be cancelled.

In summing up, the Grand Board said that while there is nothing in law to prevent registering country names as trademarks, the registration of such names had to be “approached with caution”.

The rejection came despite Iceland Foods’ assertions that they were not in the business of threatening Icelandic-based businesses who marketed themselves using the term Iceland.

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The Board said traders should not have to ‘look over their shoulder’ when using geographic terms to describe their products and services and should not have to worry they might be sued.

It also said that said that “average consumers” were likely to make assumptions about products on the basis of their national provenance.

The court report dated 15 December 2022 reveals that the board  also noted that Iceland Foods had not attempted “to distance itself commercially from the country of Iceland”. In fact, the board believed that some of the retailer’s actions – it had opened three franchise stores in the country, sponsored its football team and had some Icelandic majority shareholders – lent it “an element of authenticity” it did not previously have.

“These decisions are undoubtedly a blow to Iceland Foods,” said partner and chartered trademark attorney at IP law firm HGF, Lee Curtis.

“Although the decisions can be appealed and do not prevent Iceland Foods from using the word Iceland as a trademark in the EU, they potentially deal a blow to Iceland Foods’ ability to prevent others using Iceland as a brand in the European Union.”

Iceland Foods’ famously outspoken managing director Richard Walker has previously said the supermarket would “vigorously defend” its intellectual property rights.

“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,” he said at September’s court hearing.

“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.”