Iceland Foods Loses Again On Appeal Of ‘Iceland’ EU Trademark

You will hopefully recall our ongoing discussions about one of the strangest trademark disputes I've ever encountered between Iceland Foods, a grocer in the EU, and Iceland, the country. Way back in 2016, Iceland petitioned to remove a trademark Iceland Foods had for its company name, arguing that the trademark had allowed the company to block Icelandic companies using their own place of origin in their names. Iceland Foods attempted to then play nice, claiming it wouldn't pursue Icelandic companies aggressively any longer, but it was too late by then. Iceland got the absurd trademark registration revoked. Rather than leaving well enough alone and just going about conducting its business, Iceland Foods decided to keep the absurdity going by appealing the decision to the Grand Board of the EUIPO.

But now, hopefully this tale of absurdity has finally come to an end with the Grand Board rejecting the appeal by Iceland Foods.

Iceland Foods' appeal against this decision has now been rejected by the EUIPO Grand Board, meaning its EU trademark registrations will be cancelled. In summing up, the Grand Board said that while there nothing in law to prevent registering country names as trademarks, the registration of such names had to be approached with caution".

The board said traders should not have to look over their shoulder' when using geographic terms to describe their products and services and should not have to worry they might be sued. It also said that said that average consumers" were likely to make assumptions about products on the basis of their national provenance.

That's exactly right. It's not that you cannot have trademarks that include geographic locations, full stop. But it is the case that trademarks including geographic terms should not result in other participants in commerce being unable to denote their own places of origin, nor the origin of certain products. Given Iceland Foods' previous actions in enforcing its previously held trademark, the company flat out proved through its own actions that this particular trademark was creating the very problem the Grand Board says shouldn't be allowed to exist.

And while this doesn't disallow Iceland Foods continuing to use its business name, it does mean that it can't threaten others over use of the term Iceland" any longer. That is, for now at least.

These decisions are undoubtedly a blow to Iceland Foods," said partner and chartered trademark attorney at IP law firm HGF, Lee Curtis. Although the decisions can be appealed and do not prevent Iceland Foods from using the word Iceland as a trademark in the EU, they potentially deal a blow to Iceland Foods' ability to prevent others using Iceland as a brand in the European Union."

I really would think that Iceland Foods would now leave this alone... but I thought that the last time as well. It's hard to imagine it appealing this decision, but I guess we'll just need to wait and see.