Iceland versus ICELAND: why a country’s name can also be a trademark

British supermarket Iceland Foods is at loggerheads with Iceland the country. The supermarket chain holds a European trademark registration for ICELAND. According to the Icelandic government, the company has regularly opposed the use of the word ‘iceland’ by Icelandic companies. Iceland subsequently asked the EU Intellectual Property Office (EUIPO) to cancel the registration. But can a company claim the name of a country?

Origin and trademark
Terms which describe or could describe the origin of a product or service may not be registered as a trademark, because everyone must be able to use these terms. For that reason, an application for MONACO – submitted by the principality itself – was rejected by the EUIPO.

Iceland
So why did the EUIPO accept the ICELAND trademark? The records show that the EUIPO did not object to the trademark registration. The trademark was rejected only for fish and canned fish because the trademark for those specific products was regarded as descriptive. For other products such as meat and dairy products, the EUIPO saw no objections. The Icelandic government tried to prevent the registration, but the EUIPO rejected its objections.

Integration
So, is it impossible to register a country or regional name as a trademark? No – even if it was originally descriptive, a trademark can still be registered. The trademark must have been used intensively and for a sufficiently long time for the public to regard it not as a reference to the country, but rather as a trademark. The trademark has then acquired distinctiveness through use. When the EUIPO receives a trademark application, it must be proven that a large part of the EU public recognises the term as a relevant trademark.

What now for ICELAND?
In view of existing EUIPO policy, based on European jurisdiction, there is a good chance that the trademark registration for ICELAND will be cancelled. Iceland Foods will then have to present proof of acquired distinctiveness through use in the European Union in order to regain its registration.