Iceland v Iceland: the importance of legally protecting your brand assets

The cold war over the usage rights of the name Iceland highlights the legal problems that can arise without effective brand name protection.

When Malcolm Walker opened his first Iceland store in Oswestry, Shropshire in 1969, no one knew that he was on the path to creating a multi-million pound retail giant.

And herein lies the issue. As businesses grow, their brands often become their most valuable asset. Protecting the brand is nowadays as much a legal issue as it is a matter for the marketing department.

The government of Iceland is claiming that the use of the Iceland name as a trademark is stopping the nation’s companies using ‘Iceland’ to identify the country of origin and the provenance of their food and drink.

However, it’s unlikely anyone believes that everything sold in Iceland’s stores comes from the island of Iceland, or that Icelandic cod is produced in a large fish farm at the supermarket’s headquarters on Deeside.

As Iceland is not an EU member, it cannot make a case for PDO (protected designation of origin), the European scheme that ensures that only products genuinely originating in that region can be identified as such. This covers the likes of Herefordshire Cider, Parma Ham and Cornish Pasties. Even if Iceland were an EU member, its government is seeking blanket use of the name Iceland and it would be unlikely to be able to secure PDO.

This case does highlight the need for food businesses to take the issue of branding seriously. This is particularly the case with start-ups. Products that are produced by a designated method or have a unique recipe, can patent their process or recipe. But other brands must fall back on trademarking assets such as their name, typeface, or pack format. New brands should seek names that are as singular as possible and logos and pack formats that are distinctive.

The master of this is Coca Cola, which has been able to register its name, typeface and the classic Coca Cola bottle. 

Equally, other brands, such as Cadbury, have had less success, famously failing to register their distinctive purple. Tesco failed in its attempt to trademark the word Clubcard as an exclusive term for its loyalty scheme. And in November 2016, Nestlé lost a case in the Court of Appeal in Singapore. The court ruled that Nestlé’s KitKat-shape trademark is invalid and ruled Petra Foods’ Delfi Take­It bar cannot therefore infringe the mark.

Other brands have been more successful. In a well-known ‘passing-off’ case, The Saucy Fish Co. successfully got an injunction against Aldi to stop it selling “Saucy Salmon Fillets”.

This highlights another key issue. As you grow your brand, you need to be sure that you’re protected overseas as well as in your home market. So, getting it right at the beginning is vital.

The best advice I can give to an aspiring food brand is to ensure your legal team is as impressive as your marketing team. Consult a trademark lawyer and then protect as many of your brand’s assets as possible.

Whilst this may be an upfront expense, it will pay for itself in the long-term.