Iceland Wins Trade Mark Dispute Against Iceland

Iceland supermarket

The European Union Intellectual Property Office (EUIPO)’s Grand Board of appeal has confirmed the EUIPO’s 2019 ruling that UK-based supermarket chain Iceland Foods Ltd. trademark on the word “Iceland” within the European Union be invalidated.

In 2016, The Icelandic Ministry for Foreign Affairs, SA – Business Iceland and Íslandsstofa filed a request for a declaration of invalidity against Iceland Foods Ltd’s EU-wide trademark for the word Iceland. According to a press release from the Confederation of Enterprises, Iceland Foods, which registered the trademark in 2014, has hindered Icelandic companies in using their country of origin in the marketing of their products and services. They give an example of the supermarket chain finding issue with the registry of trademarks such as INSPIRED BY ICELAND  and ICELANDIC.

In 2019, EUIPO ruled in favour of Iceland – the country – and invalidated the supermarket’s trademark entirely, noting that “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.” According to the ruling, Iceland Foods LTD were free to continue the use of their name and logo but could not prohibit Icelandic companies to use the country name. Iceland Foods LTD appealed the decision to the EUIPO’s Grand Board of Appeal, which has now confirmed the ruling.

Can’t Trademark ‘Northern Lights’ District Court Rules

A hotel operator in Grindavík can’t claim sole use of the phrase ‘Northern Lights’ and prevent other hotels and tourism service providers from using it in their own branding, RÚV reports. The District Court of Reykjavík ruled on the matter on Friday, saying that ‘Northern Light’ is too common a phenomenon for a company to be allowed to trademark the English term. Allowing one Icelandic company the exclusive right to ‘Northern Lights’ (or even ‘Northern Light’ in the singular) would be a disproportionate restriction to impose on other guest accommodation providers.

Too Broad a Term to Trademark

The owners of Northern Light Inn in Grindavík, South Iceland requested that a ban be imposed on Grótta Northern Lights Apartments and Rooms in Seltjarnarnes, just outside of Reykjavík, preventing the latter business from using the English phrase ‘Northern Lights’ in their name.  The Grindavík hoteliers registered the phrase ‘Northern Light’ as a trademark in 2006 and believed that the Seltjarnarnes hotel’s use of it in their name, even in the plural, was an infringement on their exclusive right to the term. The matter was taken to the county magistrate, who imposed a ban on other businesses using the name. (At time of writing, the hotel was using the English name ‘Grótta Aurora Lights,’ presumably due to the standing ban.)

The magistrate’s decision has now been reversed by the District Court in Reykjavík. Reserving exclusive use of the term ‘Northern Light’ for one hotel in Iceland would mean that the trademark holders would be able to prevent businesses across the tourism sector to refer to the northern lights in their English-language marketing or publicity materials, regardless of what services they were offering, said the judge. ‘Northern Light(s)’ is a term that is “closely related to services that it’s well-known that tourists seek out in Icelandic tourism.” The fact that the trademark was for the phrase ‘Northern Light’ in the singular changes nothing, the judge continued, and nor had the plaintiffs in Grindavík proven that tourists had confused the hotel in Seltjarnarnes with the one in Grindavík because they both use ‘Northern Lights’ in their name.

See Also: Who Owns HÚ(H)!?

This isn’t the first time that there’s been a scuffle over the attempted tradmarking of a commonly used term or phrase in Iceland. In one notable example in 2018, Icelandic cartoonist Hugleikur Dagsson was not allowed to sell t-shirts he designed in honor of the Iceland’s World Cup-qualifying football team because the caption on the shirt was a trademark violation. Hugleikur’s ‘Man Celebrating,’ shirt showed a man in Iceland’s team uniform doing the now-famous ‘Viking Clap’ and shouting “HÚ!” However, Gunnar Þór Andrésson, a sports trainer at the Landspítali Hospital, claimed that the caption was too close to the exclamation “HÚH!” which he’d trademarked.

Uber Loses Trademark Case Against Taxi Company

Taxis at the airport

The Icelandic Patent Office has rejected the claims of Uber, the international peer-to-peer transportation company, that the Icelandic taxi company’s registration of the trademark Suber Taxi is a copyright infringement, RÚV reports.

In March of last year, Hreyfill, an Icelandic taxi company, applied for a trademark on the brand Suber Taxi, which is to be a taxi service that allows customers to book rides on an app. Hreyfill’s CEO noted in an interview at the time that the company was preparing itself for changes on the transportation market in the coming years.

Spokespeople for Uber said that these statements indicated that Hreyfill’s owners were aware of the Uber brand and the name of its company.

In its rejection of Uber’s claim, the Patent Office said that Uber had not sufficiently proven that Hreyfill had intentionally registered for the Suber Taxi trademark with the explicit intention of preventing Uber from entering the Icelandic market and/or availing itself of the goodwill of Uber’s customers. When considering the complaint, the Patent Office reviewed Icelandic media coverage related to Uber and stated that there was not enough indication that the Uber brand is widely thought of in connection to taxi services in Iceland.

Uber representatives had also taken excerpts out of two MPs speeches about the taxi industry and allowing Uber to come to Iceland as evidence of the brand’s existing prominence in Iceland. The Patent Office said, however, that the fact that Uber has been discussed in Icelandic parliament does not indicate that the brand is well-known throughout the country.

Hreyfill’s lawyers requested that in its response, the Patent Office should clearly note that based on current taxi laws in Iceland, it is not actually possible for Uber to operate in the country. The Patent Office declined to make any such statement.

In its response to the ruling, Uber said that the company thought it obvious that the meaning of “Uber” and “Suber” are essentially the same. The word “uber” means “over” or “super” in German, and “Suber,” they said, is clearly a play on the English word “Super.”

Iceland Wins Trademark Dispute Against Supermarket Chain

Iceland supermarket

The European Union Intellectual Property Office (EUIPO) has ruled that UK-based supermarket chain Iceland Foods Ltd. may not register a trademark on the word “Iceland” within the European Union, Kjarninn reports.

The supermarket chain secured a EU-wide trademark for the word “Iceland” in 2014, which Icelandic authorities sued to have invalidated on the basis of being far too broad and creating a monopoly that prevented Icelandic companies from registering their products with reference to their country of origin. Moreover, said the Icelandic government, “Iceland” is widely received as a geographical name and should have never been approved for trademark in the first place.

Now, years later, EUIPO has ruled in favour of Iceland – the country – and invalidated the supermarket’s trademark entirely, noting that “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.”

Foreign Minister Guðlaugur Þór Þórðarson said he welcomed the ruling, but was not surprised by it. “…[I]t defies common sense that a foreign company can stake a claim to the name of a sovereign nation as was done [in this case],” he remarked. “What we’re talking about here is a milestone victory in a matter of real importance for Icelandic exporters. Our country is known for its purity and its sustainability, hence the value of indicating the origin of Icelandic products.”

Iceland Foods Ltd. has two months to appeal the ruling.