There have been a number of cases in the media of brands frantically back-pedalling prior to the launch of a new product and having to change its name. Either that, or facing potential legal action from a brand with a shared or similar name that didn’t come up in the screening process. But what about a country name? What’s the process involved in trademarking a country name? And should this even be a consideration?
The case of Iceland (the country) versus Iceland (the UK retailer) makes answering these questions somewhat of a challenge. The government — specifically the Icelandic Ministry of Foreign Affairs and SA Business Iceland — of the small country recently made known that it is not happy with the retail chain and may be seeking legal action to reclaim its name.
The retailer has, in fact been trading since 1970 in the UK under the name Iceland Foods and is also present in other countries, including those in Europe and even Iceland itself.
The supermarket trademarked the name ‘Iceland’ in December 2014 with the European Union Intellectual Property Office (EUIPO).
According to The Telegraph, the Icelandic government has said as a result of the supermarket trademarking the name, companies in the Nordic country are not able to use the word ‘Iceland’ to describe themselves. This applies to companies whose business dealings are in no way similar to the supermarket. In fact, in an article in The Guardian, the supermarket has won several cases against businesses in the country for using the name.
So what happens next?
Well the first step will be for the government of Iceland to determine if it wants to pursue legal action. There is a lot at stake for both parties. The Icelandic government doesn’t necessarily want to stop the supermarket from using the name completely, but wants a resolution that suits both sides.
However, if the trademark were to be cancelled, the supermarket will have a long road ahead in terms of rebranding. It is an established brand that is a popular fixture in the minds of the British public. The sheer cost involved in changing its logo, messaging, packaging and advertising material could have a significant impact on its bottom line.
On the other hand, if Iceland the supermarket continues enforcing what it sees as infringements against its name by Icelandic businesses then this will impact heavily on existing and future companies and brands in the region and may have a longer term effect on country specific industry.
For organisations looking to launch new products or sub brands, the process of trademark clearance is vital. Eliminating names that are already being used and slimming down a list to a few strong contenders with a good chance of being registered can certainly help businesses mitigate risk and help them avoid litigation.
In the case of Iceland versus Iceland, it will be interesting to see who will thaw first and what the outcome will be.