Who Gets To Trademark Iceland?
from the ice-ice-baby dept
When you cover enough trademark disputes, you come to expect a fairly typical pattern to them. Entity X bullies entity Y over a vaguely similar use of a mark that often times is overly broad or generic, and then there is either a capitulation to the bullying, a settlement, or the rare instance of a trial that results in an actual ruling. The outcomes aren't typically favorable for those of us that think trademark law has been pushed beyond its original intent, but the pattern persists.
But every once in a while, you find a zebra amidst the thundering hooves of horses. Such is the case with a very strange dispute currently going on between Iceland Foods, a foodstuffs retailer, and Iceland, the island nation between Greenland and the rest of Europe. Due to the retailer's aggressive protection of its trademark, which consists of a generic term preceeded by the name of a country, Iceland has petitioned to revoke the trademark Iceland Foods has on its name for all of Europe.
Iceland is challenging Iceland Foods’ exclusive ownership of the European-wide trademark registration for the word Iceland, which it says is preventing the country’s companies from promoting goods and services abroad.
The Icelandic government claims the supermarket has “aggressively pursued” and won multiple cases against companies that use the word Iceland as part of its trademark, “even in cases when the products and services do not compete”.
If true, it makes sense for the government of Iceland to protect the interests of its citizens from such bullying. The larger point of this, however, is that the absurdity of granting a trademark, for all of Europe no less, to a single company on the name of a country forces a dispute where there should not be one. While we could spend time analyzing if Iceland Foods is being too aggressive in its trademark protectionism, or whether the Icelandic government is trying to bully the retailer back with threats over the trademark being removed, we should instead just spend our time trying to figure out who approved this trademark in the first place and then fire that person.
But overly broad or generic trademarks don't qualify as zebra stripes in a trademark story. Having a trademark holder send a delegation to a national government to try to work something out, however, probably does.
The supermarket’s founder and chief executive, Malcolm Walker, said on Tuesday: “A high-level delegation from Iceland [Foods] is preparing to fly to Reykjavik this week to begin negotiations, and we very much hope for a positive response and an early resolution of this issue.”
The retailer’s company secretary and legal director, Duncan Vaughan, will be leading the delegation in the next few days, but it will not include Walker.
Walker said: “We registered Iceland as our company name in 1970 and we have coexisted with the country called Iceland very happily ever since. They have made no contact with us to raise any concerns about trademark issues since 2012. We have no desire whatsoever to stand in the way of Iceland the country making use of their own name to promote their own products, so long as it does not conflict or cause confusion with our own business. I am sure there is ample scope for an agreement that will allow both parties to continue to live and work amicably alongside each other.”
If that all seems quite congenial, it's likely because the retailer knows how ridiculous it is that it has this trademark to begin with. The ridiculous scenario in which a food company sends emmissaries to a national government to negotiate the continued monopolistic use of that nation's name is fully brought to you by a European Union IP Office in need of a severe attitude correction.
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Filed Under: geographical names, iceland, trademark, uk
Companies: iceland
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Iceland Foods (owns Iceland)
*Iceland Fairies (yes, for sale)
*Iceland Chopsticks (yes, for eating Iceland Food)
*Iceland Autowerks (autos work, wallets twirk)
*Iceland Chicks (very hot girl band types in my imagination)
*Iceland Snowland (very cold winter playground, also in my imagination) (someone's gotta see what I did there)
*Iceland is Your land (slow jam)
* Iceland (big little place where people can put feet on earth)
(* Wholly owned subsidiaries of Iceland Foods ™ - any references to those living or dead are purely coincidental. These people are professional actors. Animals may have been here.)
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The Republic of Iceland HAS to own the rights to it's own name. End of.
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.. Iceland Food company with trademark in food industry has successful track record of preventing Iceland Anything from existing.. starting to affect Icelanders in Iceland.. Still no eyed deer?
It's all a little *silly*, isn't it? .. Still no fucking eyed deer?
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"... fire that person."
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American Airlines
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"We registered Iceland as our company name in 1970 and we have coexisted with the country called Iceland very happily ever since"
The chain has been operating for nearly half a decade, and no British person has ever confused "going to Iceland" with flying to Reykjavik (or thought that someone going to see a volcanic island was just going to get some frozen food). The most confusion I've ever noticed was when Bejam was sold to the chain and people had to stop referring to stores by that name.
But, now, it's somehow imperative that they change their name because... something. Presumably because the protectionist disease that infects so many corporations has finally spread.
Oh, and while checking one of my facts here, I amusingly found that there are branches of Iceland in Iceland. Maybe it's just too meta for them?
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*century
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On a more serious note, the complaint is about Iceland Foods filing trademark objections to any Icelandic business trying to operate in Europe using "Iceland" branding.
I think that this ultimately comes down to history.
Tim's correct that the trademark never should have been granted, but it was granted in the UK in 1970 at a time when cross-European trade wasn't a particularly big thing in the public's mind. It was a clever pun on the fact that "Ice"land was purely a frozen foods retailer.
Whoever let that UK mark into the general European trademark pool is an idiot and needs firing though; as should any judge who's sided with Iceland against an Icelandic company since that trademark was granted.
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I disagree. The Iceland store is trading across Europe, and their brand even reach places they don't trade (for example, here in Spain there's a chain of stores targeted at ex pats that stock their products). The established brand deserves protection as much as any product from the country of that name.
I agree that it's something of a legacy situation that might not be allowed in today's climate, but I'll also maintain that it's clearly not a real problem in terms of the name being used, at least until protectionist IP profiteering became a thing.
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Right or wrong, legal or not; imagine the shitstorm if a while back I'd managed to trademark "British" or "American"...
Or "Kentucky".
Trademarks need to be of sufficient complexity that they don't compete with everyday language.
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If you think this stuff is silly and complicated now, imagine what it would be like if trademarks could be retroactively removed just because people didn't think of something at a time it was granted or you start expanding into other markets (as was the AC's idea above).
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And then of course there was all the well-deserved fun when England 'Brexited' the European finals courtesy of Iceland.
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Fair enough, it's a non-zero number. I don't listen to the radio so I must miss the stories, but I was assuming that context and knowledge of the person speaking to you would clear up any confusion. Perhaps I'm overestimating the average Briton again...
"And then of course there was all the well-deserved fun when England 'Brexited' the European finals courtesy of Iceland."
Some of the memes were funny, but I don't think there was actual confusion :)
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The rule should be:
A word that does not exist (eg Kodak) can be a generic trademark
A name can't stop anyone who has that name using their name, but combined with other features, fine (eg George Harrod should be able to open a shop called Harrod's but not to copy the font and make everything green and gold)
A common word you better have a bloody good case and apply it extremely narrowly.
If the courts had applied this sort of common sense then no case Iceland brought against any Icelandic company would have succeeded, merely against anyone setting up a Supermarket and labelling everything in red on a white background.
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The problem is expansion..
When a company starts filing objections, that's a good time to review if their original trademark circumstances still apply.
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