Iceland Foods Limited who have made a name in the UK for providing frozen food and have traded for approximately 45 years, own a registered European Union trade mark for the word mark ICELAND, registered since 2002. However, their trade mark may now be in jeopardy.
Owning a registered trade mark provides a monopoly in the mark and allows the owner of the mark to prevent others from using or registering an identical or similar mark in relation to the goods and services covered by the registered mark.
In previous years, Iceland Foods has relied on its trade mark rights to prevent others from seeking trade mark protection for goods and/or services which is protected under their trade mark. Now the Icelandic government are seeking to invalidate Iceland Foods’ word mark arguing that the registration is a barrier to their country’s business who are unable to label their goods as Icelandic.
The Icelandic government’s concern is that the registration of a word mark for ICELAND is unnecessarily broad especially as Iceland Foods have a registered trade mark for their iconic stylised shop front.
Having a word mark provides exceptionally broad rights and can be enforced against other identical and similar marks that may have stylistic elements to them. On the other hand, a stylistic mark is limited to its stylistic elements and is unlikely to have such a broad enforceability.
The invalidity action also raises a further interesting question about Iceland Food’s registered mark and whether it is contrary to trade mark law. The law as it currently stands states that it is not possible to register a trade mark that is a geographical location so that it is free for use by all.
It is difficult to determine the outcome of these proceedings but should the Icelandic government be successful in their action, Iceland Foods will lose a very strong registered right. However, even if Iceland Foods lose the ICELAND word mark, they may still be able to rely on their stylised mark to object to Icelandic companies use of an identical or similar mark – and so we may all be able to “visit Iceland” in both senses of the term for the foreseeable future.
If you have any concerns about your trade mark or you know of someone else using a sign that is of concern to you, please contact our trade marks team on 01392 210 700 or firstname.lastname@example.org.