Supermarket chain told to let it go after being frozen out by EU’s trademark ruling - Palmers Solicitors

Supermarket chain told to let it go after being frozen out by EU’s trademark ruling

Supermarket chain told to let it go after being frozen out by EU’s trademark ruling

Nordic country Iceland has been successful in winning the rights back to the use of its own name following a ruling at the European Union Intellectual Property Office (EUIPO).

In 2014, the supermarket Iceland secured a trademark for the word ‘Iceland’ throughout the EU.

Since then, the country has been embroiled in a legal dispute with supermarket chain over the use of the name ‘Iceland’. The nation claims that they have experienced many attempts by the retailer to halt trademark applications from the island state’s many businesses.

Then earlier this month, the EUIPO hearing ruled that the UK based supermarket chain could not register a trademark for the sole use of the word “Iceland” within the European Union.

Icelandic ministers had argued that businesses in their country were unable to promote their place of origin across Europe and that Iceland should never have been approved for a trademark in the first place as it is widely received as a geographical name.

Their claims were supported by the EUIPO who made the decision to invalidate the supermarket’s trademark entirely, stating it has been adequately shown that consumers in EU countries know that Iceland is a country in Europe and also that the country has historical and economic ties to EU countries, in addition to geographic proximity.

Iceland Foreign Minister Gudlaugur Thor Thordarson said he welcomed the ruling but was not surprised by it.

He said: “It defies common sense that a foreign company can stake a claim to the name of a sovereign nation as was done in this case

“Our country is known for its purity and its sustainability, hence the value of indicating the origin of Icelandic products.”

The UK supermarket chain has released a statement saying they regret the decision and are planning to launch an appeal.

Luke Morgan, a Partner with Palmers who specialises in IP law, said: “In general terms, trademark infringement relates to the unauthorised use of a trademark or service mark in connection with goods or services.

“The crucial legal test is whether it is done in a manner that is likely to cause confusion, deception, or mistake amongst customers or consumers.

“In this particular case, the EUIPO ruling found that Iceland should not have been granted the trademark as it was likely to confuse confusion amongst some EU consumers.”

Luke added: “Trademark infringement can be both confusing and complex so it’s worth taking advice from a specialist IP solicitor before going to the time and expense of creating a new brand name or logo.”

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