Iceland's 800th store in Beccles

Iceland Foods has been in a long-running dispute with the Icelandic government over the trademark of the word Iceland

Iceland Foods has lost an appeal against a ruling cancelling its EU-wide trademark for the word ‘Iceland’.

The decision is a blow to the supermarket’s ability to prevent other companies from using the word Iceland in their brand name when selling products within the EU and European Economic Area.

The decision, by the EU Intellectual Property Office’s (EUIPO) Grand Board of Appeal, is the latest in a long-running battle between the frozen food retailer and the Icelandic government over whether the supermarket can claim protection for the word Iceland.

It confirms a 2019 EUIPO decision to cancel the trademark

Iceland Foods secured the EU trademark in 2014 and the Icelandic government lodged a legal challenge in 2016, arguing it impacted the ability of the country’s businesses to refer to their place of origin in marketing.

The latest decision means Iceland Foods can no longer claim monopoly over the use of the word in the trading bloc. It came alongside a separate judgement over the stylistic use of the word, which the supermarket also lost.

“Although the decisions can be appealed and do not prevent Iceland Foods from using the word Iceland as a trademark in the EU, they potentially deal a blow to Iceland Foods’ ability to prevent others using ‘Iceland’ as a brand in the EU,” said Lee Curtis, trademark attorney and partner at IP law firm HGF.

The Grand Board of Appeal ruled that while it’s possible for a country name to function as a trademark, the matter “should be approached with caution”. It ruled the matter should take into account geographical distance and familiarity of consumers with the name.

An argument put forward by the supermarket that the name Alaska was trademarked was dismissed on the basis the US state is a long way from the EU. 

“The monopolisation of a country name cannot lead to the inequitable situation in which traders with real and genuine connection to a certain geographic location are forced to constantly ‘look over their shoulder’ when referring to the real geographical origin of goods and service,” the summary documents say.

An Iceland spokeswoman said: “We are disappointed in the decision delivered by the EUIPO. However, this decision, which is open to appeal, will not change our business name, operation or trading in any way.

“Our business is family owned and was named ‘Iceland’ Foods by the late Lady Walker. We have traded successfully under our name in the UK since 1970, and we will continue to do so.

“We have never stopped third parties from using the term Iceland to describe products or services from the country of Iceland. We had sincerely hoped that we would be able to avoid any legalities in this unnecessary dispute and reach an amicable agreement.

“Iceland Foods is proud of its legacy, serving customers who rely on us for affordable products, particularly in times when the cost of living is increasing at an alarming rate.”

The Grand Board of Appeal decision was handed down on 15 December and the summary documents were published on 21 December.