Iceland versus Iceland

September 30, 2016

 

The frozen-food supermarket chain Iceland Foods may soon be facing a law suit from the Icelandic government over a trade mark dispute.

The supermarket chain has registered European-wide trade marks not just for its logo, but for the name “Iceland” itself.  The Icelandic government is concerned that it is being prohibited from promoting Icelandic goods and services. They claim that the supermarket chain has successfully objected to other trade mark applications by Icelandic companies using the word “Iceland” in their names and logos.  It is also claimed that Iceland Foods are unfairly benefitting from the associations that come with the use of the name.

This has prompted the Icelandic government to consider launching legal action, though it is yet to make its decision as to whether to bring a claim.

It is not compulsory for companies to register a trade mark to protect its name, logo or other branding, but it is advisable to do so where possible. At its heart, trade mark protection is a negative right: a trade mark holder can sue a third party which uses an identical or similar mark. Without the benefit of trade mark protection, it will be more difficult for a business to stop a third party from using a similar mark. In such circumstances the business will have to rely on establishing, for example, goodwill relating to the brand or logo, reputation, and a risk that the rival brand is confusingly similar and ultimately detrimental to the business.

Registration of a trade mark is a quicker and cheaper option, and ultimately acts as a deterrent to third parties seeking to launch a similar or identical brand.

If you would like any more information on trade marks, or anything else related to this topic, please contact our Intellectual Property/IT team.

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