Who owns ‘ICELAND’?

Imagine a sovereign nation initiating legal proceedings against a supermarket chain. This may sound like a crazy hypothetical, but believe it or not this actually happened. In 2016 the Republic of Iceland, a Nordic island state with a population of approximately 370,000 started legal proceedings against Iceland Foods Ltd., the prominent UK-based frozen food retailer operating over 1,000 stores across Europe.

At the heart of this conflict lies a fundamental question: can a private company legitimately monopolise a geographical name through trademark registration, thereby restricting a nation’s ability to prompt its own commercial interests? 

The trademark challenge commenced when the Icelandic government, through its intellectual property office ÍMARK, initiated proceedings to invalidate Iceland Foods’ existing European Union Trade Mark (EUTM) registration for the word ‘ICELAND’. The government’s central argument centred on the inherently geographic and generic nature of the term, arguing that such a designation cannot be appropriated for exclusive commercial use by a single entity. This challenge reflects broader concerns about how private ownership of geographical identifiers potentially hinders Icelandic companies’ capacity to market their products internationally, as the trademark effectively prevents them from freely associating their goods with their country of origin within EU markets. 

The legal framework governing this dispute revolves around EU trademark law’s fundamental principle that marks lacking distinctiveness or those purely descriptive of geographical origin cannot receive protection.

Iceland argued that the registration was secured in bad faith and that ‘ICELAND’ fails to satisfy distinctiveness requirements, thereby unjustly blocking Icelandic producers from utilising their nation’s name in commercial contexts.

On the other hand, Iceland Foods maintained that decades of continuous commercial operation had established “distinctiveness through use”, creating a strong association between the mark and the retailer in consumers’ minds, thus satisfying legal requirements for trademark validity. 

This case exemplifies the complex tensions emerging when established commercial usage of geographical names conflicts with the sovereign rights of nations to control their own identifiers. Moreover, the dispute carries significant implications for trademark portfolio management in increasingly globalised markets, highlighting the delicate balance between protecting legitimate commercial interests and preserving nations’ rights to their own geographical designations.