Trademark owner fails to prevent use of mark in company name

In Icelandic Water Holdings Ltd v Iceland Glacier Wonders Ltd (Case E -3003/2013, June 18 2014), the Reykjavik District Court has considered whether the defendant was allowed to use the words 'Iceland Glacier' in its company name.

In April 2013 the plaintiff purchased all the trademarks of Iceland Glacier Products Ltd. These trademarks included the word mark ICELAND GLACIER (Registration No 674/2008), applied for in August 2007 and registered in June 2008 in the following classes of the Nice Classification:

• Classes 3 and 25 (not relevant in this case);
• Class 30 (ice cream with flavours); and
• Class 32 (beers; aerated and other non-alcoholic beverages; fruit beverages and fruit juices; vitamin and energy drinks, syrups and other preparations for making beverages).

The word-and-design mark ICELAND GLACIER (depicted below) (Registration No 1175/2007), which covered goods in Class 32 (beers; mineral and spring water, aerated waters and other non-alcoholic beverages; energy and health drinks; fruit beverages and fruit juices; syrups and other preparations for making beverages; non-carbonated water, carbonated water), was also included in the sale.

The defendant company, Iceland Global Water Ltd, was established in 2007. In 2013 its name was changed to Iceland Glacier Wonders Ltd. The plaintiff demanded that the defendant ceased using its trademark in the new company name. Both companies are engaged in the marketing and export of water.

The court stated that the plaintiff could not base its claim on the word mark ICELAND GLACIER, since mineral and spring water in Class 32 and ice in Class 30 were specifically excluded during the examination of the application at the Patent Office. Consequently, that registration could not support a claim based on the Icelandic Trademarks Act, the Act on Supervision of Unfair Commercial Practices and Transparency of the Market or the Company Names Act.

The court then referred to the word-and-design mark ICELAND GLACIER, noting that this registration covered mineral and spring water in Class 32. However, since the mark was a combined word-and-design mark and the design was not included in the company name of the defendant, the registration would not support the claim of the plaintiff. The court referred to Article 4 of the Trademarks Act, which concerns the scope of protection of registered trademarks, and underlined that the similarities between the marks must be assessed globally and that the visual comparison was the most relevant. Referring to Article 15, Paragraph 1 of the Trademarks Act (which states that a "trademark right acquired through registration does not cover such elements of the mark which could not be registered separately"), the court found that the words making up the mark were descriptive.

Accordingly, the court rejected the claim of the plaintiff.

The court's evaluation of the scope of protection of the word mark ICELAND GLACIER was based on the deletion of certain words in Classes 30 (ice) and 32 (mineral and spring water) from the application as filed according to a decision of the Patent Office. Such limitation of the list of goods (based upon a lack of distinctiveness) was decisive according to the court's reasoning. Since the term "other non-alcoholic beverages" was not deleted from the list of goods, the precise coverage of the registration could be further debated.

The decision can be appealed to the Supreme Court until September.

Valborg Kjartansdóttir, Sigurjónsson & Thor, Reykjavík