Member Article

A trade mark dispute about the name Iceland highlights the issue of trade marks in relation to geographic names.

A dispute has arisen in Europe between Iceland the country and Iceland the brand – Iceland is a large UK-based supermarket chain. The supermarket chain has an EU trade mark registration for the name Iceland, a registration that it struggled long and hard to get, overcoming multiple oppositions along the way. The country is now threatening to take steps to have this trade mark registration cancelled.

It’s unclear what exactly led to this dispute. There are suggestions that Iceland’s tourism authority filed an application to register its trade mark Inspired by Iceland, and that the supermarket chain threatened to oppose it. But there are also suggestions that Icelandic companies that have Iceland in their name are being threatened with trade mark infringement proceedings. Either way, relations between the two parties are decidedly frosty.

It’s early days yet and we’ll have to wait and see where this goes. But the dispute does shine a spotlight on some of the trade mark issues that arise with geographic names.

they’re difficult to register

For starters, trade marks that are geographic names are very difficult to register. In general terms, section 10 of the South African Trade Marks Act provides that a trade mark that “is not capable of distinguishing” cannot be registered. More specifically, it says that a trade mark that “consists exclusively of a sign or an indication which may serve, in trade, to designate the geographical origin… of the goods or services” cannot be registered.

A while back, Monaco failed in its attempt get an EU trade mark registration for the name Monaco for goods and services including computer software and transport. The court in that case held that for most people in the EU, the name Monaco would be understood as designating either the geographic origin or the destination of the goods or services, rather than the commercial origin.

even if you get a registration, it will be limited

Trade marks can sometimes be registered on the basis of acquired distinctiveness, in other words, on proof that there has been such extensive use that the trade mark significance supersedes the geographic significance. But the registration will be somewhat limited. That’s because section 34(2)(b) provides that a trade mark registration is not infringed by the use of any “bona fide description or indication of the… geographical origin… of the goods or the rendering of the services.” So, even if you do get a registration, it might not amount to very much.

in an age of nation branding, should there be specific protection?

Despite the fact that country names are very difficult to register, we live in an age of so-called “nation branding”. What the Iceland tourism authority is doing under the name Inspired by Iceland is a good example of this. In a previous article, we looked at how South Africa had followed the trend of nation branding with Brand South Africa, an organisation that, on its website, said that it was established to “create a positive and compelling brand image for South Africa”, and that its main objective was the “marketing of South Africa”.

So, how should nation brands be protected? In the article, we discussed the fact that certain countries are agitating for some form of specific or sui generis legal protection for nation brands. According to the magazineManaging Intellectual Property, Jamaica is one of the countries that’s in favour of such a development. A Jamaican spokesman is quoted in the magazine as saying that Jamaica wants “to protect country names against conflicting marks, business identifiers and domain names, and prevent use of indications consisting of or containing country names in relation to goods or services which do not originate in the country indicated by the country name.”

there is some protection for Geographical Indications

In previous articles, we’ve discussed the issue of Geographical Indications (“GIs”). South Africa has, for many years, given protection to certain geographic names such as Champagne, Burgundy, Port and Sherry, but this was done by way of specific agreements. GI protection was taken up a gear a few years back when the South African Department of Trade and Industry published a list of European food and drinks names that are now prohibited, and that can only be used by producers in the countries indicated – this prohibition was under section 15 of the Merchandise Marks Act. Names on the list included Roquefort (France), Feta (Greece), Gorgonzola (Italy), Edam (Netherlands) and Blue Stilton Cheese (UK). The authorities subsequently also declared the local name Rooibos a prohibited mark under this section.

In Europe, they do this differently in that they have specific forms of protection for geographical indications, such as Protected Geographical Indications.

generic top level domain names can raise issues too

The issue of geographic names comes up in the context of domain names too. A while back, we reported on how the new system of generic top level domain names resulted in registrations for .cape town, .durban and .johannesburg, as well as .africa, which belongs to the African Union. We also reported on how there had beendisputes about regional names – the company Amazon was in dispute with the governments of Brazil and Peru over the name .amazon, whereas the company Patagonia was in dispute with the governments of Argentina and Chile regarding the name .patagonia.

There may be reasons for adopting geographic names as trade marks. But there are probably far better reasons for choosing non-geographic names!

Ilse du Plessis

trade mark attorney director IP

[email protected]

cell: +27 82 411 7547