The recent attempt by the Icelandic Ministry for Foreign Affairs to freeze Iceland Foods out of their claim to the ICELAND brand name is not the first time the Icelandic authorities have challenged the UK retailer’s right to the name, but is the latest round in a fourteen year saga that began in 2002 when the UK frozen food retailer first made its claim to the EU trade mark. This latest challenge appears to be in retaliation for successful challenges brought by the frozen food chain against attempts by Icelandic companies to encroach on its hard won commercial territorial rights over the ICELAND brand. Iceland Foods Limited has in the past successfully beat off attempts by companies based in Iceland to block it from registering the ICELAND brand and equally successfully foiled attempts to encroach on its hold on the ICELAND name. In apparent retaliation the Icelandic Ministry for Foreign Affairs has hit back by applying to the European Union Intellectual Property Office (EUIPO) to revoke the UK Company’s EU trade mark.
Their argument is based on the fact that the EU Trade Mark Regulation prohibits registration of any trade mark which is devoid of distinctive character or which consists exclusively of a sign or indication which may serve in trade to designate a relevant characteristic of goods or services for which the trade mark is to be protected, or which is of such a nature as to deceive the public as to the nature, quality or geographic origin of those goods or services.
The challenge has been brought by the Icelandic Ministry for Foreign Affairs in conjunction with a governmental organisation (“Promote Iceland”) and a not for profit organisation (“SA Business Iceland”) which have been established to promote the interests of Iceland and Icelandic businesses. In support of their legal challenge, they are arguing that they represent the interests of traders and consumers to ensure that there is no detraction from the identity, image and reputation of Icelandic goods by sale of goods which have no ties to the country.
What is interesting is that this is not actually the first time that the Icelandic government has challenged the right of the UK Company to register the ICELAND trade mark, or put forward this line of argument. When Iceland Foods applied to register the name as an EU trade mark back in 2002, the Icelandic Ministry of Foreign Affairs wrote direct to the President of the EU IPO seeking to block registration, as, indeed did the Trade Council of Iceland, the Federation of Icelandic Industries and a number of other bodies representing Icelandic trade and industry. All of these representations failed at the time and since the right to an EU trade mark must be judged as at the date the application was made, it is difficult to see precisely why this attempt coming some 14 years after the event should succeed. This is particularly so because the UK Company will be entitled to argue that the brand has become factually distinctive of its goods and services, and because of this, that the purchasing public is not likely to confuse the UK retailer’s goods for those of the Icelandic government.
Indeed, attempts were also made by a number of Icelandic companies to block the original registration of the ICELAND trade mark based upon claimed rights in a number of national trade marks including ICELANDIC FROZEN SEAFOOD, ICELAND HARVEST BRAND, ICELAND SPRING and SAMBAND OF ICELAND. However, none of these companies were actually able to prove they owned the valid enforceable rights they claimed, or simply withdrew their oppositions when required to put forward their evidence. The official file shows that the observations made by the Iceland Ministry of Foreign Affairs were passed to the relevant examiner who does appear to have read them but decided not to refuse the original application which was finally registered on 9 December 2014.
Given that the Icelandic Ministry of Foreign Affairs raised precisely the same heads of argument in 2004 as those on which it now relies and the original application by Iceland Foods survived opposition brought by a number of Icelandic companies, it remains to be seen whether the application to invalidate the registration stands any greater chance of success.