Iceland v Iceland: frosty trademark relations
In a battle between country and company, Iceland (the nation) and Iceland Foods (the UK supermarket) have been locked in a frosty trademark battle. Now, the EUIPO has ruled in the case, although a thawing in relations between the parties is unlikely.
On April 5, the EUIPO's Cancellation Division ruled that the supermarket's EU trademark (EUTM) for 'Iceland' is invalid.
Iceland's government had sought to have the mark invalidated, arguing, among other things, that Iceland Foods had been able to stop Iceland-based companies from using the country's name in their trademarks.
Iceland Foods, a specialist in frozen foods such as prepared meals, argued that it is a well-known supermarket. The company also pointed out that despite the Icelandic government having part-owned the company from 2005 to 2012, it did not object to the EUTM at that time.
After the EUIPO backed the nation, Gunnar Örn Harðarson, managing director at Arnason Faktor in Reykjavík who represented the Icelandic government, told Managing IP that the EUIPO is becoming stricter in its assessment of marks that are only descriptive of origin and therefore lack distinctiveness.
Despite Iceland Foods committing to appeal against the decision, its chances of winning appear low, according to lawyers who spoke to Managing IP in the aftermath of the ruling. We will know more by June 5 (the deadline for filing the appeal); we just hope the case hasn't melted away by then.
Former judge weighs in on FRAND
In an interview at International Financial Law Review (IFLR), a publication in the same editorial group as Managing IP, a former judge discussed a range of legal issues, including FRAND.
FRAND (fair, reasonable and non-discriminatory) licensing is a hot topic – and not just in the IP press, it seems. Katherine Forrest, formerly a district judge of the US District Court for the Southern District of New York, told IFLR that, previously, regulators focused their attention on the issue of patent holdup. This is where standard essential patent (SEP) owners "leverage the supposed market power conferred by the incorporation of their SEPs into standards to extract more favourable and potentially unreasonable terms from licensees," she explained.
However, more recently, "the prevalence and actual competitive impact of holdups has come into question by the Department of Justice (DoJ) signalling a potential shift in its stance to a belief that antitrust law should not play a role in policing SEP owners' FRAND commitments when contract or common law remedies would be adequate," she added.
"More attention has recently been paid by the DoJ to issues of patent holdout [not holdup, as before], or potential licensees' ability to object to licence terms or refuse to take a licence," she said.
Despite this change, the Federal Trade Commission has not signalled a corresponding shift, Forrest argued. "Consequently, there is considerable uncertainty among both SEP owners and potential licensees as to how their dealings are likely to be scrutinised by regulators."
Forrest may have moved over to private practice, working as a partner in Cravath's litigation department, but comments from such a legal authority on the lack of FRAND clarity will be interesting for those following developments.
Happy birthday to IP
Every April 26, the IP community celebrates "World IP Day", and this year the theme was "Reach for Gold: IP and Sports".
To mark the occasion, WIPO hosted a number of activities, including a public screening of comedy-drama film "Champions" on the evening of April 25. According to IMDb, the Spanish-language film is about a basketball coach who is sentenced to community service and "forced to work with a team of mentally disabled players".
Javier Fesser and members of the cast were present for the screening of what was the highest-grossing Spanish language film of 2018 in Spain.
On the same evening, the Managing IP team also helped celebrate World IP Day by visiting The Shard – London's tallest building – for a drinks reception hosted by law firm Mathys & Squire. While we chose not to take the 306 flights of stairs (which would almost certainly have counted as a sporting achievement) we did enjoy the stunning views of London which, for now at least, is an integral part of the EU IP landscape.
