Iceland sues Iceland: The country versus the UK chain

Iceland wants its name back.

The Nordic island nation known for its exploding geysers and views of the Northern Lights is suing U.K. grocer Iceland Foods Ltd., seeking to blunt efforts by the discount chain to keep real Icelandic companies from using the country’s name.

Iceland Foods, founded in 1970, ranks as Britain’s second-biggest retailer of frozen-food products—like fish sticks and pizza—behind grocery giant Tesco PLC. In 2002, it applied for a European Union trademark for the “Iceland” name. Two years ago, the trademark was granted.

Iceland’s government said it tried to resolve the matter out of court, but this week declared enough is enough. Reykjavik accused Iceland Foods of “aggressively” pursuing cases against Icelandic companies that use “Iceland” as part of their trademark or marketing, according to a government statement.

An Iceland Foods spokesman said the company had “received no recent approaches to achieve an amicable resolution of this issue, which would be our preferred approach.”

The dispute heated up last year when Iceland Foods objected to the trademark “Inspired by Iceland” being used for a range of products like meat, eggs, coffee and grains. The trademark was registered by an entity called Islandsstofa that Iceland Foods initially assumed was a commercial outfit but recently discovered was the Icelandic government.

“Had we known that the Icelandic government was behind it, we could have had a conversation—a conversation which we’d still be delighted to have,” the company spokesman said.

Icelandic companies, the government statement said, aren’t able to promote themselves across Europe in association with “their place of origin—a place of which we are rightly proud and enjoys a very positive national branding.”

Iceland is seeking to invalidate the exclusivity of the company’s EU trademark registration, filing suit at the European Union Intellectual Property Office, the bloc’s main trademark authority. The suit argues that “the term ‘Iceland’ is exceptionally broad and ambiguous in definition, often rendering the country’s firms unable to describe their products as Icelandic.”

The spokesman for Iceland Foods said the supermarket chain will “vigorously defend Iceland Foods’ established rights where there is any risk of confusion between our business and Iceland the country.” However, he said the company doesn’t believe any “serious confusion or conflict has ever arisen in the public mind, or is likely to do so.”

The wife of Iceland Foods’ founder, Malcolm Walker, chose the name, after considering other options like Penguin and Igloo, according to the spokesman.