Last week, the Icelandic Ministry of Foreign Affairs, SA Business Iceland and Promote Iceland embarked on a challenge to revoke Iceland Foods’ trade mark for the word ICELAND at the European Union Intellectual Property office in Alicante. They argue that no one company should have exclusive use of the name.

The company’s trade mark grants it an EU wide monopoly over the use of the word “Iceland” in association with promoting certain goods and services since it was registered on 9 December 2014. These products and services encompass a wide range of food and drink categories, as well as the provision of supermarket services. The trade mark is based on a much older UK trade mark which was filed on 31 October 1994. But even that mark was filed almost 25 years after the company began trading under the “Iceland Foods” name in 1970.

Why would the company have taken so long to seek a trade mark for its name in the first place? We might speculate that the reason for this, is due to the inherit difficulty in securing a trade mark for a country name or other geographical location. Section 3(1)(c) of the Trade Mark 1994 prohibits the registration of marks which designate a geographical origin. At first blush, in light of this prohibition, you might conclude that the Icelandic Government are on strong ground. But it is not quite so straightforward. It is likely that the trade mark will be defended on the basis that the geographical significance of the country name has been displaced by the company through use. In other words, they will say that when UK consumers see the “Iceland” name, they do not think there is any association with Iceland the country nor think the company’s goods originate from there. The company will say that it has effectively displaced the significance of the name, with “Iceland” acquiring a secondary meaning.

Iceland Foods had traditionally been a retailer with frozen goods at its core, which might suggest a certain stretched connection with Iceland. But would UK consumers really associate Iceland (the country) with frozen goods just because it has a colder climate?

As an interesting side in this dispute, the supermarket’s social media team seized on the Icelandic national football team’s defeat of England in the Euro 2016 finals this summer, and sent out a series of tongue in cheek tweets referring to the match (“Unexpected result in the bagging area”). That prompted a number of people to tweet the supermarket chain, congratulating them on “their team’s victory”. At least some of these tweets appeared to relate to a genuine belief that there was some connection between the supermarket and the country. It could be argued that by the supermarket sending out their initial tweets, they caused some of the confusion.

Amusing social media marketing tactics aside, it would be much easier to seek to acquire a trade mark for a country name which is unlikely to have any possible connection with the products for which the registration is sought, for example, a trade mark registration for the words NORTH POLE, being sought for bananas. It is unlikely that any consumers would assume that the bananas originated from the North Pole, so you would be on much safer ground.

There are other examples of trade marks of country names. There is a trade mark for JAMAICA, secured by Proctor & Gamble for soap and other beauty products. A similar trade mark registration had been sought for JAMAICA for alcoholic drinks and fruit juices, but that was rejected on the basis that the trade mark office examiners used their discretion to decide that such products might be associated with the country Jamaica and the effect of granting one company the monopoly right to use the word “Jamaica” in association with alcoholic drinks and fruit juices would be unfair to a range of rum or other alcoholic drinks producers who might wish to indicate to consumers that their products had come from that country.

So what lessons might be learnt from this? It seems pretty clear that a Scottish business is unlikely to secure a trade mark for the word “Scotland” if they wished to sell products associated with whisky, haggis or tartan under it. Similarly the word “France” is unlikely to be granted as a trade mark for croissants or wine. The assessment of whether or not a particular country’s name will have an association with certain products is very much down to the judgement of the examiners considering the trade mark application.

There is a feeling that the Icelandic Government are trying to shut the stable doors as the horse disappears over the horizon. It is clear that Iceland Foods has spread its wings and the breadth of the trade mark goes far beyond what they had anticipated. The company has previously successfully opposed an Icelandic fish retailer from registering the trade mark ICELAND GOLD and also a company which sells Icelandic national products from registering the trade mark CLEAN ICELAND. On the face of it, Iceland Foods seem to be well placed in this dispute. They managed to persuade the EU IPO that any connection with Iceland the country was sufficiently displaced to have the trade mark registered and with ongoing use of the mark, enhancing their reputation this is only going in one direction.

However, Brexit might spell a challenge for the company in maintaining its EU trade mark. Under the “use it or lose it” principle it is a requirement that an EU trade mark must be sufficiently used in the EU to allow the company to maintain the mark on the register. In the case of a company such as Iceland Foods where their business is predominantly in the UK, extensive use in the UK can equate to sufficient use in the EU. Following Brexit, use of a trade mark in the UK will not count towards the mark being used in the EU. The company will soon need to think about commencing effective use of its trade mark across the EU or risk losing it.

The EU Intellectual Property Office challenge appears to be in its infancy. No doubt we have not heard the last of it; unless the company and the country can come up with a co-existence agreement to allow them to live amicably, Iceland is likely to be in the headlines for more than ash clouds and an over performing national football team in the months ahead.

Last week, the Icelandic Ministry of Foreign Affairs, SA Business Iceland and Promote Iceland embarked on a challenge to revoke Iceland Foods’ trade mark for the word ICELAND at the European Union Intellectual Property office in Alicante. They argue that no one company should have exclusive use of the name.

The company’s trade mark grants it an EU wide monopoly over the use of the word “Iceland” in association with promoting certain goods and services since it was registered on 9 December 2014. These products and services encompass a wide range of food and drink categories, as well as the provision of supermarket services. The trade mark is based on a much older UK trade mark which was filed on 31 October 1994. But even that mark was filed almost 25 years after the company began trading under the “Iceland Foods” name in 1970.

Why would the company have taken so long to seek a trade mark for its name in the first place? We might speculate that the reason for this, is due to the inherit difficulty in securing a trade mark for a country name or other geographical location. Section 3(1)(c) of the Trade Mark 1994 prohibits the registration of marks which designate a geographical origin. At first blush, in light of this prohibition, you might conclude that the Icelandic Government are on strong ground. But it is not quite so straightforward. It is likely that the trade mark will be defended on the basis that the geographical significance of the country name has been displaced by the company through use. In other words, they will say that when UK consumers see the “Iceland” name, they do not think there is any association with Iceland the country nor think the company’s goods originate from there. The company will say that it has effectively displaced the significance of the name, with “Iceland” acquiring a secondary meaning.

Iceland Foods had traditionally been a retailer with frozen goods at its core, which might suggest a certain stretched connection with Iceland. But would UK consumers really associate Iceland (the country) with frozen goods just because it has a colder climate?

As an interesting side in this dispute, the supermarket’s social media team seized on the Icelandic national football team’s defeat of England in the Euro 2016 finals this summer, and sent out a series of tongue in cheek tweets referring to the match (“Unexpected result in the bagging area”). That prompted a number of people to tweet the supermarket chain, congratulating them on “their team’s victory”. At least some of these tweets appeared to relate to a genuine belief that there was some connection between the supermarket and the country. It could be argued that by the supermarket sending out their initial tweets, they caused some of the confusion.

Amusing social media marketing tactics aside, it would be much easier to seek to acquire a trade mark for a country name which is unlikely to have any possible connection with the products for which the registration is sought, for example, a trade mark registration for the words NORTH POLE, being sought for bananas. It is unlikely that any consumers would assume that the bananas originated from the North Pole, so you would be on much safer ground.

There are other examples of trade marks of country names. There is a trade mark for JAMAICA, secured by Proctor & Gamble for soap and other beauty products. A similar trade mark registration had been sought for JAMAICA for alcoholic drinks and fruit juices, but that was rejected on the basis that the trade mark office examiners used their discretion to decide that such products might be associated with the country Jamaica and the effect of granting one company the monopoly right to use the word “Jamaica” in association with alcoholic drinks and fruit juices would be unfair to a range of rum or other alcoholic drinks producers who might wish to indicate to consumers that their products had come from that country.

So what lessons might be learnt from this? It seems pretty clear that a Scottish business is unlikely to secure a trade mark for the word “Scotland” if they wished to sell products associated with whisky, haggis or tartan under it. Similarly the word “France” is unlikely to be granted as a trade mark for croissants or wine. The assessment of whether or not a particular country’s name will have an association with certain products is very much down to the judgement of the examiners considering the trade mark application.

There is a feeling that the Icelandic Government are trying to shut the stable doors as the horse disappears over the horizon. It is clear that Iceland Foods has spread its wings and the breadth of the trade mark goes far beyond what they had anticipated. The company has previously successfully opposed an Icelandic fish retailer from registering the trade mark ICELAND GOLD and also a company which sells Icelandic national products from registering the trade mark CLEAN ICELAND. On the face of it, Iceland Foods seem to be well placed in this dispute. They managed to persuade the EU IPO that any connection with Iceland the country was sufficiently displaced to have the trade mark registered and with ongoing use of the mark, enhancing their reputation this is only going in one direction.

However, Brexit might spell a challenge for the company in maintaining its EU trade mark. Under the “use it or lose it” principle it is a requirement that an EU trade mark must be sufficiently used in the EU to allow the company to maintain the mark on the register. In the case of a company such as Iceland Foods where their business is predominantly in the UK, extensive use in the UK can equate to sufficient use in the EU. Following Brexit, use of a trade mark in the UK will not count towards the mark being used in the EU. The company will soon need to think about commencing effective use of its trade mark across the EU or risk losing it.

The EU Intellectual Property Office challenge appears to be in its infancy. No doubt we have not heard the last of it; unless the company and the country can come up with a co-existence agreement to allow them to live amicably, Iceland is likely to be in the headlines for more than ash clouds and an over performing national football team in the months ahead.