Posted: Wed 21st Dec 2022

Deeside based Iceland Foods loses out to Iceland the Nordic country in long running trademark battle

News and Info from Deeside, Flintshire, North Wales
This article is old - Published: Wednesday, Dec 21st, 2022


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Deeside-based supermarket chain, Iceland has lost its long-running battle with Iceland the country over the trademark of the frozen food chain’s name.

Iceland Foods has fought for years to trademark the name of the Nordic island but the Icelandic government has claimed this would stop the country’s businesses from describing their products as Icelandic.

In 2016, the frozen food specialist received registration of the brand Iceland at the EU Intellectual Property Office.

Iceland the country won a ruling in 2019 from the EU Intellectual Property Office (EUIPO) that invalidated the exclusivity of Iceland Foods’ EU trademark registration.

The retailer appealed against the ruling and the case was taken to the Grand Board of the EUIPO, in September.

The Grand Board has now rejected the appeal, in a statement, it said: “Iceland (the UK chain of supermarkets) registered both marks for a range of goods and services, but Iceland (the country – via the Ministry for Foreign Affairs and Business Iceland) filled invalidity requests.”

“Now, the Grand Board confirmed the two contested decisions of the Cancellation Division.”

“Following a recap of the case-law relating to trade marks containing a geographical name, the Grand Board applied the ‘Chiemsee’ criteria (what is required to prove acquired distinctiveness) and found that the marks in question would be perceived by the relevant public as indicating that the goods and services so indicated originate from Iceland.”

“The Grand Board was particularly mindful of the fact that the geographical name in question is that of a Member State of the European Economic Area, with deep economic, historical and socio-cultural ties with the European Union.”

A 56 page court report says Iceland Foods “has done little to distance itself commercially from the country of Iceland.”

“This is further exemplified by the fact that the EUTM (Iceland Foods) proprietor actively sought to expand its commercial activity to Iceland (the country) by opening three franchise stores.”

“Moreover, it sponsored the Icelandic football team in 2016 and had expand its commercial activity to Iceland by opening three franchise stores.”

As quoted by www.grocerygazette.co.uk, partner and chartered trademark attorney at IP law firm HGF, Lee Curtis said: “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.”

In September Richard Walker, CEO of Iceland Foods said: “Our business is family-owned and was named Iceland Foods by my mother, the late Lady Walker.”

“We have traded successfully under our name in the UK since 1970, and today it is one of the UK’s most recognised brands.”

“While we will vigorously defend Iceland Foods’ intellectual property rights where there is any risk of confusion between our business and those of another business, this would not restrict Icelandic producers describing goods or services as coming from Iceland.”

“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.”

“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.”

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