UPDATED: Iceland Takes on UK Supermarket Chain 'Iceland Foods' Over Trademark

A spokesman for Iceland's foreign ministry has confirmed that the Nordic island nation has initiated legal action against a British supermarket chain in connection with the latter’s trademark registration for the word "Iceland." According to the European Union Intellectual Property Office (“EUIPO”)’s records, Iceland's foreign ministry filed a motion for “Revocation & invalidity” on Thursday in connection with United Kingdom-based Iceland Foods Ltd’s trademark registration for the country name.

According to the Iceland foreign ministry’s filing, Icelandic firms have been unable to describe their products as “Icelandic” as a result of Iceland Foods Ltd’s registration – which has been in effect since December 2014 and extends to eight classes of goods and services, including those that cover dishwashers and washing machines; paper articles and plastic packaging; various types of food and food-related commodities; and beer, among other things. As a result, the Icelandic government has asked the EUIPO to invalidate the mark.

"Iceland Foods has aggressively pursued and won multiple cases against Icelandic companies which use ‘Iceland’ in their representation or as part of their trademark, even in cases when the products and services do not compete," the Icelandic foreign ministry said in a statement. “The goal is to ensure the right of Icelandic companies to use the word ‘Iceland’ in relation to their goods and services,” it added.

The ministry said that it has tried to resolve the situation through discussions with Iceland Foods, a company specializing in frozen foods, over the past years, but has been unsuccessful.

RIGHTS IN A GEOGRAPHIC MARK

As we have told you in the past, trademarks that have a very specific geographic element, often face a difficult process in terms of attaining trademark protection. That is because geographic trademarks are often deemed to be descriptive and as a result, additional considerations come into play. In the U.S., the Lanham Act – the federal statute that governs trademark law – and the U.S. Trademark Trial and Appeal Board (“TTAB”) – a body within the U.S. Patent and Trademark Office (“USPTO”) responsible for hearing and deciding certain kinds of trademark cases, including appeals – have very specific rules that govern geographic marks.

According to the Lanham Act, no trademark will be registered if it “[c]onsists of a mark which ... when used on or in connection with the goods of the applicant is primarily geographically descriptive of them.” (§ 2(e)(2), 15 U.S.C. §1052). Marks that are primarily geographically descriptive may only be registered upon a showing of a secondary meaning.

So, what is a geographically descriptive mark? The TTAB – by way of its own case law – has created a three-part test for determining whether or not a mark is “primarily geographically descriptive.” The mark will fall into that category if:

(1) The primary significance of the mark is a generally known geographic location;

(2)  The goods or services originate in the place identified in the mark, and

(3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark.

Category three seems to be at issue in the case at hand. However, even with this in mind, it is not impossible for a geographic mark to receive federal trademark protection. American Apparel – a federally registered trademark – is proof of that.

Even if a mark is merely descriptive, it may acquire distinctiveness through consumer recognition (so-called "secondary meaning"). A brand may show that its mark has acquired distinctiveness by presenting evidence of the length, manner and exclusivity of the trademark's use; advertising expenditures; sales numbers; market share; and customer surveys.

UPDATED (11/30/16): British supermarket chain Iceland Foods is sending its legal counsel to Iceland in an effort to resolve a legal dispute over its trademark registration of the word "Iceland.” Iceland Foods confirmed that it is urgently seeking a meeting after the north Atlantic island initiated legal action against the retailer last week. Iceland Foods said on Tuesday it wanted "to lay out constructive proposals for resumption of the peaceful coexistence between the company and country that had prevailed for the previous 46 years."