Commenting on news that the island nation of Iceland is taking legal action against British frozen-food chain Iceland over the right to use their shared name, Shaun Sherlock, a senior associate and trade mark attorney at Potter Clarkson, says:
"Iceland Foods have, over many years of trading, built up a reputation in the trade mark ICELAND primarily as a retail store brand. As such, they claim that customers now recognise the trade mark in the high street as the store and do not confuse it with the country. Therefore protecting the trade mark and preventing other traders from getting too close to it in the retail sector is vital to their business.
"However, Icelandic businesses are permitted to refer to the geographic origin of their goods and services in a fair and reasonable manner. Such genuine use of the geographical indicators “Iceland” or “Icelandic”, provided it is in accordance with honest practices, should not therefore conflict with any trade mark rights in the word ICELAND held by Iceland Foods.
"It is surprising that this dispute has escalated to this public level after so many years, but maybe relations between the parties have become a little “frosty” for some other reasons."