A song of Ice and Ice

Iceland, a country famous for the northern lights, skyr yoghurt, and their recent performance in the Euros, has made headlines this week for threatening the trade mark rights of a major UK supermarket. The cause of this ire is unclear, as some sources reportthat Icelandic tourist board, ‘Promote Iceland’ was faced with opposition proceedings when they attempted to register an EU trade mark ‘Inspired by Iceland’. Other reportsstate that Icelandic companies are being prevented from trading under their country name due to Iceland Foods’ earlier right.

Iceland the grocery

Iceland Foods has held the EU trade mark for the word ‘Iceland’ since 2014. This registration was no easy feat as it took 12 years from the date of filing, due to the obstacles posed by five oppositions. Since receiving the trade mark, they have opposed registrations which include the word 

‘Iceland’ to varying degrees of success. This Kat can understand the frustration of Icelandic entities who pay patronage to their country in their trade mark choice, but does not see how the Icelandic government can mount a valid cancellation action.

There are two types of cancellation proceedings; revocation and a declaration of invalidity.

Grounds for revocation

The grounds for revocation of a trade mark are found under Article 12 of the EU Trade Mark Directive.  Under this Article, a mark can be revoked for non-use over a continuous period of five years, genericide, or use which has caused the mark to be misleading as to the nature, quality or geographical origin of those goods or services. None of these grounds apply to the ‘Iceland’ trade mark.

Declaration of invalidity

There are two grounds for invalidity; absolute and relative. These are found under Articles 3 and 4 of the EU Trade Mark Directive respectively.  As for the absolute grounds of invalidity, the mark ‘Iceland’ has distinctive character after years of use in the UK and other European countries. It does not indicate geographic origin, and it has not suffered from genericide. Furthermore, it does not fall foul of the shapes, public policy and morality, deception, religious symbol, national emblem or bad faith provisions.

Iceland the country

The relative grounds of invalidity were tested in the numerous oppositions, to no avail, so it is unlikely that there are any relative grounds which exist at this point. If there are, it would be unusual for the country of Iceland to initiate proceedings, as the relative grounds are based on conflict with an earlier existing mark, and it does not appear that Iceland (the country) owns any such mark.

Tip of the Iceberg?

Iceland (the country) probably does not have any realistic chance of cancelling Iceland Food’s trade mark.  However, this issue is the tip of a policy iceberg, raising the question of whether a country’s name should be registrable, particularly considering present restrictions on the registration of national emblems.

Under Article 3(2)(c)  of the EU Trade Mark Directive, registration of flags and emblems of Paris Convention member states is prohibited, in accordance with Article 6ter of the Paris Convention.  According to WIPO:

“The purpose of official signs and hallmarks indicating control and warranty is to certify that a State or an organization duly appointed by a State to that effect has checked that certain goods meet specific standards or have a given level of quality. Official signs and hallmarks indicating control and warranty exist in several States with respect to precious metals or products such as butter, cheese, meat, electrical equipment, etc. In principle, officials signs and hallmarks indicating control and warranty may also apply to services, for instance those relating to education, tourism, etc.”

This information is pertinent considering one of the alleged stakeholders in any opposition is the Icelandic tourist board. If the purpose of denying registration to national emblems is to allow countries to exercise control over goods and services, why not extend this protection to country names? The reason is likely to be that producers often incorporate their country’s name into their trade marks, like the Icelandic Seafood Company, whose trade mark ‘Iceland Gold’ was opposed by Iceland Foods. Limiting the use of country names to official state organizations would not sit well with many existing right holders.

Perhaps the utilitarian solution in the present situation would be to allow registrations of country names, but restrict oppositions where there is a genuine link to the country (the difficulty of assessing ‘genuine links’ is an issue in itself). This would prevent companies such as Iceland Foods from preventing Icelandic entities from using their country’s name.

It would be an unfortunate day for trade mark law if Iceland Foods successfully opposes the Icelandic tourist board’s application for ‘Inspired by Iceland’.