Iceland’s trade mark nothing but a puddle

After a challenge by the Icelandic government, the global supermarket chain Iceland has had its European Union trade mark invalidated. This decision comes merely five years after finally obtaining registration after a lengthy (12 years) application process in which the mark was opposed by a number of Icelandic companies.

The EU trade mark has proven problematic to Icelandic companies as, while not a member state of the EU, native Icelandic businesses have claimed they have faced restrictions in promoting their Icelandic goods in the region. As such the Icelandic Ministry of Foreign Affairs challenged the supermarket’s word mark in all eight classes claiming it was concerned that its businesses were unable to promote themselves across Europe in association with their place of origin – a place of which the Icelandic people “are rightly proud and enjoys a very positive national branding.”

Iceland (the store) aimed to use the fact that the mark had acquired distinctiveness through use in the European Union (and even in Iceland itself) as a defense to the challenge – a position the Icelandic government descried to “not hold very much water.”

Not only did the EUIPO put the mark on ice, it also ruled that the supermarket chain pay the cancellation fee and the Icelandic government’s costs. The supermarket chain has until 5 June 2019 to appeal this decision, a move that we, and most likely the Icelandic government as well, are expecting. However, it is an interesting decision in light of the widespread use of geographic names in brand names (and also the possibility for invalidation proceedings to be successful even after contested oppositions failed).

By Simon Casinader and Daniel Cartmell

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