Iceland vs. Iceland®: why can a country’s name also be a trademark?

Trademarks

The British supermarket Iceland Foods is at loggerheads with Iceland. The supermarket chain has a European trademark registration for ICELAND. According to the Icelandic government, the company has regularly opposed the use of the word ‘iceland’ by Icelandic companies.

Iceland subsequently requested the European trademark authority EUIPO to cancel the registration. Can a company claim the name of a country?

Origin and trademark

Terms which describe or could describe the origin of a product or service may not be registered as a trademark. This is because everyone must be able to use these terms. For that reason, an application for MONACO – submitted by the principality itself no less – was rejected by EUIPO.

Iceland

So why was the trademark ICELAND accepted? That’s a good question. The records show that EUIPO apparently had no objection to the registration of the trademark. The trademark was only rejected for fish and canned fish because the trademark for those specific products was regarded as descriptive. For other products like meat and dairy products, EUIPO saw no objections. The Icelandic government did try to prevent the registration at the time, but to no avail: EUIPO ignored the Icelandic objections.

In view of the current policy of EUIPO, based on European jurisdiction, there is a good chance that the trademark registration for ICELAND will be abolished.

Bart ten Doeschate - Trademarks & Designs

Integration

So, is it impossible to register a country or regional name as a trademark? No. Even if it was originally descriptive, a trademark can still be registered. The trademark must then have been used intensively and for a sufficiently long time for the public to no longer regard it as a reference to the country, but as a trademark. The trademark then has acquired distinctiveness through use. When the EU receives a trademark application, it must be proved that a large part of the EU public recognises the term ICELAND as a supermarket trademark.

Iceland®, what now?

In view of the current policy of EUIPO, based on European jurisdiction, there is a good chance that the trademark registration for ICELAND will be abolished. Iceland Foods will then have to present proof of acquired distinctiveness through use in the EU for it to have a chance of retaining its registration.