February 22, 2023
Iceland the nation freezes out Iceland the supermarket in the competition for their name
Iceland the nation freezes out Iceland the supermarket in the competition for their name

Most UK consumers are familiar with the popular supermarket chain that trades under the name ICELAND in the UK. Iceland Foods Ltd (the “company”) was founded in 1970. It has over 900 shops across the UK and additional shops in Europe, particularly Ireland.

This case is the latest in a long running dispute between the company and the Icelandic government.



In 2002, the company applied for EUTM No. 002673374 "ICELAND" (word) for a wide range of goods and services in classes 7, 11, 16, 29, 30, 31, 32 and 35.

In 2013, it filed EUTM No. 011565736 "ICELAND" (stylised) for goods and services in classes 29, 30 and 35.

Both EUTMs reached registration but the Government of Iceland applied to cancel both the word mark and the figurative mark under Article 59 (1) (a) EUTMR in conjunction with Article 7(1)(b), (c), and (g) EUTMR.

The EUIPO found in favour of the Government of Iceland- the marks were considered descriptive of the geographical origin of the goods and services at issue.  


Grand Board of Appeal

The Government of Iceland appealed to the EUIPO Grand Board of Appeal which upheld the cancellation divisions findings via its decisions of 15 December 2022.

Before reaching its decision, the Grand Board conducted an oral hearing in September 2022 which is not typical for these proceedings.

In its findings, the Grand Board confirmed that country names may function as a trade mark but the matter has to be approached with caution. In this case, the Grand Board found that the target public would assume that the goods and services in the company’s trade marks may originate from Iceland, i.e. the signs would be perceived as an indication of geographical origin of the goods. This means that the company’s trade marks cannot fulfil the essential function of a trade mark as an indicator of trade origin.

The company argued that the signs had acquired a secondary meaning as a trade mark as a result of longstanding and intensive use by the company. However, no evidence of use was filed for key countries where the descriptive meaning of Iceland would be understood, including Malta, Sweden, Denmark, the Netherlands and Finland. In addition, the company could not establish that the recognition in the UK and Ireland could be extrapolated to the remaining relevant territories. As such, the company’s claim to acquired distinctiveness failed.


Key take aways

Brand owners may wish to avoid choosing country names as trade marks. Although the case confirmed they can function as trade marks in certain circumstances, in practice country names are likely to be harder to protect.

Country names will only likely be registrable when consumers do not associate the sign with the characteristics of the goods or services for which registration is sought.

Even if registration is achieved, it can still be challenged at any time after registration.

Ultimately, if a country name or other descriptive sign is chosen and a brand owner’s aim is for the sign to be registered as a trade mark, then it is advisable for the business to be organised in collecting and storing evidence of use.  

Food & Drink /  Trademarks /  Travel /  Disputes

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