Supreme Court confirms that compound term has acquired distinctiveness


In Gagnaeyðing Ltd v Valgeirsson (Case 690/2014), the Supreme Court has considered whether Valgeirsson infringed Gagnaeyðing Ltd's rights in its trademark and company name.

The Supreme Court confirmed the decision of the district court in Case E-254/2013 (May 15 2014). The district court had found that the word ‘gagnaeyðing’ lacked inherent distinctiveness, but had acquired distinctiveness through use by Gagnaeyðing Ltd.

A Google search seems to indicate that the word ‘gagnaeyðing’ has been incorporated into the Icelandic language. It is worth considering in this respect that the Patent Office has explicitly refused to register this word for the services at issue in Class 40 on the ground that the word was descriptive. The opinion of the Patent Office (which was not contested by the applicant) did not appear to have been raised before the district court or the Supreme Court.

This case can be considered in light of the fact that loanwords and icelandicised versions of words from foreign languages exist in the Icelandic language - organisations and individuals in many specialist areas strive to coin new words to meet contemporary needs in order to preserve the language. Such words are often descriptive within the meaning of the Trademarks Act, since they are formed by joining existing words or parts of words together with the aim of creating a new transparent term. The word in question, ‘gagnaeyðing’, is an example of this manner of creating a new transparent term.

In another recent Supreme Court decision, a request for an injunction (preventing the defendant from using the word mark ICELAND GLACIER in the course of its business) was accepted by the district commissioner, but later rejected by the courts (Supreme Court Case 731 /2014).

The court’s evaluation of the scope of protection of the word mark ICELAND GLACIER was directly based on the deletion of certain words in Classes 30 (ice) and 32 (mineral and spring water) from the list of goods as filed according to a decision of the Patent Office during the examination of the application. That particular limitation was decisive, according to the Supreme Court.

In the present case, however, it is interesting to note that a newly coined word was explicitly rejected by the Patent Office as being descriptive, but this fact was not considered by the courts.

Valborg Kjartansdóttir, Sigurjónsson & Thor, Reykjavík

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