Nation of Iceland versus Iceland supermarket

By David Hejmanowski - Contributing columnist

“We are looking for a live and let live outcome.”

— Jon Asbergsson, Managing Director “Promote Iceland”

“We are not aware that our use of Iceland the name has ever caused confusion with Iceland the country.”

— Iceland Foods statement

Nordic legend says that in the year 868 a Norwegian man named Hrafna-Flóki Vilgerðarson decided to sail northwest in an attempt to locate a land recently discovered by Norse explorers. He brought along his wife and children, as well as several other men and his livestock. The trip seemed cursed from the start. One of his daughters is said to have drowned in the Shetland Islands, and his livestock succumbed to a harsh winter upon arrival. Those same legends say that he climbed a mountain in despair, and looked down up a fjord of ice and thus gave the island its name — Iceland.

The island remained under Norwegian, and then following the Kalmar Union, Danish control for more than nine centuries. It wasn’t until the world wars that Iceland found independence, first as a kingdom and then as a republic in 1944. Among the men who served as prime minister both during the period Iceland was kingdom and as a republic was Hermann Jónasson. And he happened to be friends with a British Woolworth’s employee named Malcolm Walker.

Walker and a business partner decided that they had seen enough of the department store business and opened a grocery focused on frozen foods. Because of his friendship with the prime minister, Walker decided to name the grocery store “Iceland,” with the added benefit that the name highlighted the store’s focus.

Between 1970 and 2017, the food chain grew rapidly. There are now nearly 900 locations in the UK, Ireland, Spain, the Czech Republic, Malta, Norway, Portugal, Libya and, yes, Iceland. Iceland Foods is a $250 million company and employs more than 23,000 people.

Any company that large and with a reach that broad, is going to want to protect its investment and its brand. In that past, that would have meant registering trademarks in individual nations all across Europe, but the European Union now has a single trademark registration process that covers all of its members. And Iceland Foods has registered a trademark for the word “Iceland.” Not only that, but they have an established history of threatening or bringing legal action against other European countries that try to use the word.

The nation of Iceland was once among the poorest nations in Europe. But in recent decades, it has flourished and is now among the richer European countries. As their business interests have grown, the Icelandic foreign ministry has decided that it’s important to make sure that businesses in Iceland aren’t prevented from using the name of their home country because of the trademark registration of a British grocery store.

The parties were unable to reach any agreement, and so the nation of Iceland is now suing the grocery store Iceland in the case of Iceland v. Iceland. The grocery chain notes that it has used the name for nearly 50 years without incident, though that argument is a bit specious since they only registered the trademark in 2014. The nation says that “the registration of a country name that enjoys highly positive national branding to a private company defies logic and is untenable.” Raising the stakes, the grocery chain even blocked the country’s attempt to trademark the phrase “Inspired by Iceland.” I’m not sure exactly who is being inspired by frozen corn, but the grocery made sure the country couldn’t use the phrase.

Cases like this can take years to reach their conclusion. In the meantime, a quick search of the U.S. Patent and Trademark Office database confirms that no one yet has a registered U.S. trademark on the work “Reykjavik” — just in case anyone is looking to open a hardware store that focuses on Icelandic tools, or perhaps a coffee shop that serves only iced coffees. But if you do, look out — those Icelanders are litigious when it comes to their place names.

By David Hejmanowski

Contributing columnist

David Hejmanowski is judge of the Probate/Juvenile Division of the Delaware County Delaware County Court of Common Pleas.

David Hejmanowski is judge of the Probate/Juvenile Division of the Delaware County Delaware County Court of Common Pleas.