Iceland versus Iceland supermarkets – a trademark conflict in process

iceland-flag-mapA trademark conflict between the UK supermarkets Iceland and the Republic of Iceland has gathered pace recently.

In short, the case concerns the fact the UK stores has been using that name for 50 years and of course they possess a family of trademarks across the EU. The problem has arisen when the company started to file oppositions against EU trademarks with applicants from Iceland who include in these marks the name of the country as geographical source. The case escalated additionally when the UK supermarkets opposed even a trademark filed by the Iceland Government which in turn launched an invalidation procedure against the store’s marks.

The last development is that a delegation from the UK company will go to Iceland to negotiate an amicable  deal on the case.

This case is really interesting because shows clearly one possible lapse in brand building process. When the UK store choose the name Iceland they were been caught in a kind of trap, because they quite normally sought to register that name as a trademark. The problem is that in such case the mark owner is obliged to enforce its rights and in this case to file the relevant oppositions, otherwise they can lose the protection over their marks and even worse can allow other companies, including stores to enter the market  with the same name.

The main issue here is that the mark is identical with the name of the country.

So the conclusion is that when you choose a new brand name you need to take into account all possible consequences and negative outcomes so as to try to escape them as early as possible.

Source: WIPR.


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