So that’s why Iceland’s gone to the EUIPO!

One of the recent trade mark disputes to have received publicity, this case concerns the battle between the Icelandic Government and frozen food retailer Iceland over the use of the country’s name. The dispute originates from an application by the Icelandic Government to register the trade mark “Inspired by Iceland” which was subsequently blocked by the supermarket chain.

The Icelandic Government claim that the retailer is preventing Icelandic firms from describing their products as ‘Icelandic’. Despite their trade mark registration, legally Iceland stores are not allowed to prevent use of this term where it serves as a term to denote the geographical origin of a goods or service.

However, it should also be noted that the dispute arose from a trade mark application whose purpose was not purely to describe the geographical origin of products. Such a sign with such a limited purpose could not be registered as a trade mark it would prevent fair competition in the market place from the producers local rivals.

The Icelandic Government could challenge the supermarket’s trade marks due to their “improper use” by the trade mark owner. They could argue that the trade marks are being used to stymie legitimate products, competition and trademark applications. This argument is fraught with difficulty as not only is there little relevant case law, but it traditionally has focused on whether the actual use of the mark was likely to mislead the public as to the nature, quality or geographical origin of those goods or services. None of that is in issue in relation to the supermarket’s goods.

Pending any such application, Icelandic food producers will need to be bold and stand up to the supermarket chain where use of the term Iceland or Icelandic is justified. This can be difficult, especially for small producers, when faced with a well resourced and financed international company but they will also have the potential of bringing a claim against the supermarket if they threaten trade mark infringement proceedings where the use of the Icelandic name clearly indicates the origin of the goods.

Iceland Foods hits back at Icelandic government over trademark

http://www.bbc.co.uk/news/business-38201571