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Who Gets To Trademark Iceland?


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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