< Back to latest news & events

News

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

January 2025

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 16th 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

Latest updates

The EPO Board of Appeal comments on the scope of the morality exclusion from patentability

The recent decision, T1553/22 of the Board of Appeal required the Board to consider the scope of the exclusions from patentability under Article 53(a) EPC. The invention in this case …

Read article

Designation of a technical standard as a trademark

EUTMR Article 7 (1) (c) and Article 7 (1) (b) – DASH The designation “DASH” of the technical standard/protocol/format for streaming data on the Internet constitutes a descriptive indication in …

Read article

HGF ranked band 4 in Chambers and Partners Global Guide for Germany in 2025

Chambers and Partners Global Guide 2025 is now live. HGF is proud to be ranked as a firm in Germany. HGF is ranked band 4 for: Germany: Intellectual Property: Patent …

Read article

HGF ranked in The Legal 500 Germany 2025

HGF is proud to be ranked in The Legal 500 Germany 2025 guide. The Legal 500 provides the most comprehensive worldwide coverage on recommended Law firms, Lawyers, Attorneys, Advocates, Solicitors, …

Read article

T 1847/22: Procedural considerations in appeal: Re-ordering of requests and the impact on admissibility

Background This case concerned EP 3 085 344 B1, which relates to a wound pad, a self-adhesive member comprising a wound pad. The patent was opposed by two opponents. During …

Read article

Regulation of NGT plants in Europe- Polish Presidency proposes an alternative solution to the Patent ban

In the latest development on the new proposed legislation for the regulation of NGT (gene-edited) plants in the EU, the Polish Presidency have proposed an amendment which removes the proposed …

Read article
Event - 18th March 2025

Salzburg Seminar: Pitfalls in trade mark practice - What can be protected as a trade mark?

The registration of trade marks is a central component of trade mark protection – but which signs can actually be protected? In recent years, the national trade mark offices and …

Event details