The supermarket chain Iceland is a household name in the UK. Since it was founded in 1970, the brand has made efforts to register trade marks in respect of its name. However, one barrier that it has encountered is that, unlike its competitors, its name is shared by a country.

A frosty dispute

In 2019, the European Union Intellectual Property Office (EU IPO) ruled that Iceland Food Ltd could not register a trade mark in respect of the word 'Iceland' in Europe after the Icelandic government challenged the application.

The view of the Icelandic Government was that the granting of the trade mark 'Iceland' to the supermarket chain would prevent their country's businesses or products from being described with reference to their country of origin.

In 2019, the EU IPO denied the supermarket's application for a trade mark on the basis that it was adequately shown that European consumers knew that Iceland was a European country and one which had historical and economic ties to other EU countries. The supermarket has said that it has no intention to prevent Icelandic businesses from using their country's name to promote their own products.

The supermarket has now chosen to appeal the EU IPO's 2019 decision, with the appeal commencing last month. We await the outcome of the appeal.

The dispute raises the following interesting question - what are the rules in the UK which may constrain brands who wish to refer to place names as part of their brand?

Can brands seek IP protection for the use of place names on their products?

It is not uncommon for companies to use geographical references or places of origin in the names of their products.

In the UK, food, drink and agricultural products which have a geographical connection or are made using traditional methods can be registered under the UK Geographical Indication (GI) scheme. GIs describe food, agricultural or alcoholic drinks which have a particular quality or reputation which is derived from, or attributable to, its geographical origin. To be considered a GI, the product will generally require to have been produced, processed, or prepared in the area of origin.

Some examples are Stornoway black pudding, Scotch beef and Scotch whisky. These products have distinctive features which result from their place of origin.

The GI scheme operates like any other form of intellectual property by conferring rights on individuals to refer to the GI on packaging and advertisements. Only those manufacturers or producers which can show that they meet the requisite criteria will be entitled to use the GI as part of their branding. The purpose behind the GI protection is to ensure consistency in the quality of products manufactured and to provide consumers with assurance that products marked with a GI label have been produced to a certain standard or in a certain way.

For example, Scotch lamb must originate from lambs born and processed in Scotland and the producer must adhere to strict rules regarding the welfare of the animals used in the agricultural process.

Ultimately, the GI scheme framework prevents competitors from producing copycat products of a lesser quality which does not meet its stringent criteria.

The value range - how can you tell if a product is part of the GI scheme?

When a product meets the criteria for the UK GI scheme, it will contain a distinctive label. There are three UK GI logos that represent the designations of GI product:

protected designation of origin (PDO) – to acquire PDO status the whole of a product must be completely manufactured (i.e prepared, processed, and produced) within a specific area or place and as a result possess certain unique properties.

protected geographical indication (PGI ) – this demonstrates that there is a relationship between the product and a specific geographical region, where there is a particular quality, reputation or other characteristic attributable to that geographical origin. The product must at least have been in part been prepared, processed, and produced within the specific area/place and therefore have acquired certain characteristics as a result.

traditional speciality guaranteed (TSG) - This does not guarantee that a product has a link to a certain geographical area. Instead, it verifies that the product has a specific character meaning that either the raw materials it is derived from, or the production or processing method, is "traditional" in nature.

Producers must follow the rules for adding a GI logo to products or packaging before they can sell it. They have until 1 January 2024 to add the relevant UK GI scheme logo if their protected food product was registered before 1 January 2021 (and therefore, was part of the EU GI scheme which predated the UK scheme pre-Brexit). The logos are as follows:

Don’t be left out in the cold – protect your IP

Companies invest substantial time and funds into building up their brand's reputation, which is why it is crucial that they register IP rights wherever possible as part of implementing a robust IP strategy. Iceland Food Ltd's aim to register the trade mark at the EU IPO is driven by a desire to protect their goodwill.

While the use of a country name as a brand name is uncommon, referring to geographical origins in the advertisements of products is not new, and the UK GI scheme is designed to protect and preserve the quality of products associated with specific geographical origins.

If you are interested in finding out more about how to protect or enforce your brand's IP rights, please get in touch with a member of the IP, Technology & Data team or your usual contact at Brodies.

Contributors

Hannah Clark

Solicitor

Monica Connolly

Senior Associate