A chill descends on Iceland

By Brand Heeler

Is it really possible to confuse a country and a supermarket?

This one has been bubbling under for some time now but is now set to blow like an Icelandic geyser: the Republic of Iceland (the country – best known for grilled puffins, pickled sharks and defunct banks) is taking on Iceland Foods Ltd (the supermarket – best known for frozen food and TV ads starring Kerry Katona). Despite the small likelihood of anyone popping out for a packet of deep-frozen tempura prawns, only to find themselves doing shots of Brennivín beneath the Northern Lights by mistake, the Republic of Iceland has applied to cancel a recent trade mark application by Iceland Foods Ltd.

The UK supermarket has been in business in various guises since 1969 and, oddly, has spent some of that time under Icelandic ownership. It’s primarily to be found in the UK but also has stores across the EU and – wait for it – Iceland. Although it’s had trade mark registrations for its logo for most of that time, it only managed to successfully protect its name as a ‘word mark’ in 2014 after a 12 year dispute with domestic carrier Icelandair. More recently, it was Iceland Food’s turn to oppose the Iceland Tourist Board’s attempt to register INSPIRED BY ICELAND for various foods and drinks.

Nevertheless, it’s odd that this dispute seems to be kicking off after so many years. Perhaps a combination of a resurgent (though still battered) economy and the national football team’s stunning run in Euro 2016 has put some wind in the Icelanders’ sails? It’s probably far too late for the country to complain that the supermarket has ‘stolen’ its name, not least because, from a trade mark point of view, it’s not a very protectable one. Even in Icelandic, ‘Ísland’ simply means ‘ice land’ (and has nothing to do with ‘islands’, though that doesn’t really help). Given that its landscape is indeed largely defined by glaciation and regular sub-zero temperatures, the name is getting dangerously close to descriptiveness which is, of course, the death knell for any brand. And given that ‘land’ is a very common suffix for all manner of economic undertakings – from theme parks to discount stores – a chain of frozen food shops trading as ICELAND would seem to be well within its rights to claim it’s simply doing what it says on the tin (or, rather, saying on the tin what it does).

We wonder whether the Republic needs to consider a rebrand? Historical alternative toponyms have included Snæland (‘Snowland’), Snjóland (‘Snowland’), Klakinn (‘Iceberg’), Eylenda (‘Island’) and Frón (‘Land’) but none of these are much good either. Maybe they should have stuck with Garðarshólm (‘Home of Gardar Svavarsson’) – we can’t see anyone in Britain being able to pronounce that, much less wanting to shop there.

This article contains our thoughts and opinions on an issue of general interest and is written from the perspective of Australian and/or English law. It is not legal advice and is not provided in the context of a solicitor-client relationship. It may not even be relevant to your jurisdiction. No duty of care is assumed or accepted. Please carry out appropriate research and consult with a suitably qualified legal expert before taking any action or making any decisions.

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