Iceland Foods v the Icelandic government goes to the EU General Court

When one thinks of Iceland, you may envision picturesque glaciers and hot springs, or you might think of prawn rings and frozen party food. The ongoing trade mark tussle between the popular supermarket chain and the Icelandic government sees yet another chapter, in the eight-year story that seeks to balance the protection of national identity and commercial interests.

A recap

The dispute stretches back to 2014, when Iceland Foods successfully registered two trade marks for the ICELAND word and stylised trade marks. However, in 2016, the Icelandic Government initiated cancellation actions against those registrations. Although those challenges may have been driven to a degree by national pride, the Icelandic government also claimed that Iceland Foods were challenging Icelandic based producers from using the country’s name to market their products across the EU. The critical question is: how can Icelandic businesses promote their Icelandic heritage and origin, when a foreign entity claims trade mark rights to the name? Iceland Foods would no doubt argue they cannot stop the legitimate right of an Icelandic based business from stating they are from Iceland anyway under trade mark law, but equally the Icelandic government would argue, why do their nationals have to look over their shoulder worrying over the use of the geographic term Iceland.

Recent developments

Fast forward to the 16^{th of} October 2024. Richard Walker, Executive Chairman of Iceland Foods, appeared at the General Court of the European Union in Luxembourg, hoping to challenge the 2022 decision of the Grand Board of Appeal of the European Union Intellectual Property Office (EUIPO). The 2022 decision reaffirmed a 2019 ruling, which stripped Iceland Foods of its two trade mark registrations in the EU. Although the Grand Board of Appeal held that there was no per se block on the registration of country names as trade marks, it was all a matter of degree. The Board found ICELAND trade marks were on the wrong side, despite Iceland Foods arguing that geographical terms such as ALASKA had been accepted in the past. While that ruling does not hinder the supermarket’s ability to operate across the EU, it does significantly complicate their claim to name ‘Iceland’.

Walker argued the clear distinction between the brand ‘Iceland’ and the country itself, contending that this differentiation should allow Iceland Foods to continue using the name, without infringing on national identifiers. The stakes could not be higher, in a battle to protect national pride, and a long-standing family run enterprise.

The bigger picture

A ruling in favour of the Icelandic Government, could embolden other nations to challenge trade mark applications and registrations that coincide with geographic identifiers at least in the EU. This raises concerns about the ability of companies to use their national names in branding. Could FIJI water face the same fate by the Fijian Government?

For Iceland Foods, a trade mark registration is vital for the protection of its brand identity, with over one thousand stores in the UK and operations in sixty-five countries, remarkably even including an Iceland store in Iceland’s capital.

Next steps

Should Iceland Foods lose this round at the General Court, they may then appeal to the Court of Justice of the European Union (CJEU), as their last bid to salvage their registration. Although, the CJEU will only hear their case if it concerns points of law. The outcome of this ongoing case, could be hugely influential in setting significant precedent for international trademark policies, particularly concerning the use of national names which are particularly attractive in the food and beverage sector.

This case is a reminder of the potential challenges to multinational companies, balancing commercial interests with a respect for national identity. As stakeholders await the court’s decision, the implications go far beyond the country of Iceland, as the dispute reflects the intricate balance between legal protection for commerce, and culture.

This article was prepared by HGF Trade Mark Attorney Tamsin Knight