It's Feeling Chilly: Iceland v Iceland

A trade mark dispute has arisen between Iceland (think volcanoes and glaciers) and Iceland (think chicken drumsticks and fish fingers).

Since 9 December 2014, Iceland Foods has held an EU trade mark for the word ICELAND in connection with various types of food and drink and the provision of supermarket services. It was recently announced that the Icelandic government (together with a service organisation for Icelandic businesses, SA Business Iceland and the Icelandic tourist board, Promote Iceland) is now seeking to cancel this registration.

Iceland Foods has been using the name Iceland for 46 years. So why is Iceland (country) only taking action now? According to the Icelandic Ministry of Foreign Affairs website, it is because Iceland Foods has "aggressively pursued and won multiple cases against Icelandic companies which use 'ICELAND' in their representation or as part of their trademark, even in cases when the products and services do not compete". It goes on to state that "the term 'ICELAND' is exceptionally broad and ambiguous in definition, often rendering the country's firms unable to describe their products as Icelandic."

The supermarket chain has, in the past, prevented an Icelandic fish retailer from registering the trade mark ICELAND GOLD. Sources also suggest that Promote Iceland was faced with trade mark opposition proceedings when it applied for the EU trade mark INSPIRED BY ICELAND.

There are unconfirmed rumours that the government's actions have also been fuelled by Iceland Foods'marketing campaign surrounding the successful Icelandic national football team's Euro 2016 campaign and the famous victory over England in the last 16. This involved a prominent sponsorship deal with Iceland's national football team, and resulted in the supermarket chain receiving a flurry of tweets congratulating them on their victory over England, as people evidently confused one type of Iceland for another.

It is easy to understand the frustration felt by Icelandic entities if they are being prevented from promoting themselves in association with their place of origin. It may seem unfair that companies are allowed to register the name of a country as a trade mark, which in turn enables them to block trade mark applications for the same or similar marks. Whilst there are rules preventing the registration of national flags and emblems, there is currently nothing to...

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