A song of Ice and Ice

Iceland, a country famous for the northern lights, skyr yoghurt, and their recent performance in the Euros, has made headlines this week for threatening the trade mark rights of a major UK supermarket. The cause of this ire is unclear, as some sources reportthat Icelandic tourist board, ‘Promote Iceland’ was faced with opposition proceedings when they attempted to register an EU trade mark ‘Inspired by Iceland’. Other reportsstate that Icelandic companies are being prevented from trading under their country name due to Iceland Foods’ earlier right.

Iceland the grocery

Iceland Foods has held the EU trade mark for the word ‘Iceland’ since 2014. This registration was no easy feat as it took 12 years from the date of filing, due to the obstacles posed by five oppositions. Since receiving the trade mark, they have opposed registrations which include the word 

‘Iceland’ to varying degrees of success. This Kat can understand the frustration of Icelandic entities who pay patronage to their country in their trade mark choice, but does not see how the Icelandic government can mount a valid cancellation action.

There are two types of cancellation proceedings; revocation and a declaration of invalidity.

Grounds for revocation

The grounds for revocation of a trade mark are found under Article 12 of the EU Trade Mark Directive.  Under this Article, a mark can be revoked for non-use over a continuous period of five years, genericide, or use which has caused the mark to be misleading as to the nature, quality or geographical origin of those goods or services. None of these grounds apply to the ‘Iceland’ trade mark.

Declaration of invalidity

There are two grounds for invalidity; absolute and relative. These are found under Articles 3 and 4 of the EU Trade Mark Directive respectively.  As for the absolute grounds of invalidity, the mark ‘Iceland’ has distinctive character after years of use in the UK and other European countries. It does not indicate geographic origin, and it has not suffered from genericide. Furthermore, it does not fall foul of the shapes, public policy and morality, deception, religious symbol, national emblem or bad faith provisions.

Iceland the country

The relative grounds of invalidity were tested in the numerous oppositions, to no avail, so it is unlikely that there are any relative grounds which exist at this point. If there are, it would be unusual for the country of Iceland to initiate proceedings, as the relative grounds are based on conflict with an earlier existing mark, and it does not appear that Iceland (the country) owns any such mark.

Tip of the Iceberg?

Iceland (the country) probably does not have any realistic chance of cancelling Iceland Food’s trade mark.  However, this issue is the tip of a policy iceberg, raising the question of whether a country’s name should be registrable, particularly considering present restrictions on the registration of national emblems.

Under Article 3(2)(c)  of the EU Trade Mark Directive, registration of flags and emblems of Paris Convention member states is prohibited, in accordance with Article 6ter of the Paris Convention.  According to WIPO:

“The purpose of official signs and hallmarks indicating control and warranty is to certify that a State or an organization duly appointed by a State to that effect has checked that certain goods meet specific standards or have a given level of quality. Official signs and hallmarks indicating control and warranty exist in several States with respect to precious metals or products such as butter, cheese, meat, electrical equipment, etc. In principle, officials signs and hallmarks indicating control and warranty may also apply to services, for instance those relating to education, tourism, etc.”

This information is pertinent considering one of the alleged stakeholders in any opposition is the Icelandic tourist board. If the purpose of denying registration to national emblems is to allow countries to exercise control over goods and services, why not extend this protection to country names? The reason is likely to be that producers often incorporate their country’s name into their trade marks, like the Icelandic Seafood Company, whose trade mark ‘Iceland Gold’ was opposed by Iceland Foods. Limiting the use of country names to official state organizations would not sit well with many existing right holders.

Perhaps the utilitarian solution in the present situation would be to allow registrations of country names, but restrict oppositions where there is a genuine link to the country (the difficulty of assessing ‘genuine links’ is an issue in itself). This would prevent companies such as Iceland Foods from preventing Icelandic entities from using their country’s name.

It would be an unfortunate day for trade mark law if Iceland Foods successfully opposes the Icelandic tourist board’s application for ‘Inspired by Iceland’.

Donut maker gored by University of Texas over a fan favourite pastry

Donut Taco Palace in Austin, Texas, is famous for their ‘Longhorns donuts’. These donuts are modelled after the Hook ‘em Horns hand gesture which is made in support of the University of Texas’ Longhorns American football team. These donuts of allegiance satisfied the sweet tooth of many Longhorns fans until last month, when the University of Texas became aware of the situation. They sent a cease and desist letter to the owner of the shop, Angel Feng, citing trademark infringement.

The University of Texas, referring to the donuts, stated that,

“…UT is understandably concerned about your use of the LONGHORN Marks in this manner…We trust that, now that these rights have been brought to your attention you will take the appropriate steps to discontinue sales of the ‘Longhorn Donuts’ and refrain from any other uses of the University’s marks.”

The University has a trademarkin the word ‘Longhorns’.  It is unclear whether the Hook ‘em Horns gesture is a registered character mark as the trademark registry recordsdo not display an illustration and it does not appear on the University’s branding website. If it is not registered, the University would have to rely on unfair competition to prevent further use of this mark.

Longhorns fans displaying Hook 'em Horns

Trademark Law

Under s.32 of the Lanham Act, a trademark is infringed where a person, without the consent of the mark holder, uses the mark in commerce, in a way which is likely to cause confusion. In this case, if referring to the donuts as ‘Longhorns’ makes consumers think the the University has a connection with the donuts, infringement has occurred.

The factors for assessing confusion are set out in Polaroid Corp v Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961) and include the strength of the mark, the degree of similarity of the marks, the degree of similarity of the products, the likelihood that the senior user would expand, actual confusion, the defendant’s motive and good faith, the quality of the defendant’s product, the sophistication of the buyer class.

Badge of allegiance or
confusing trademark infringement?

Based on these factors, a finding of confusion is unlikely. Although the ‘Longhorns’ mark is well-know due to the popularity and history of the football team, and the marks are identical, the products are not similar as ‘Longhorns’ is registered for apparel and gourmet foods. It is unlikely that the University would expand into pastries based on the merchandise they currently sell. The donut shop was motivated to make the donut after receiving a request for the Hook ‘em Horns shape from a customer. The donut shop also does other hand gestures such as thumbs up and the peace sign, making it appear that the shop is acting in good faith.

There was no evidence of actual confusion presented by the University, and it is important to note that confusion does not mean call to mind, as set out in University of Notre Dame v J.C Gourmet FoodImports Co., Inc., Appelle, 703 F.2d 1372 (Fed. Cir.. 1983). In that case, University of Notre Dame opposed the registration of ‘Notre Dame’ for cheese. The U.S Court of Appeal held that;

“Likely…to cause confusion” means more than the likelihood that the public will recall a famous mark on seeing the same mark used by another. It must also be established that there is a reasonable basis for the public to attribute the particular product or service of another to the source of the goods or services associated with the famous mark. To hold otherwise would result in recognising a right in gross, which is contrary to the principles of trademark law…”

Consumers who purchase ‘Longhorns donuts’ are more likely to remember their favourite football team than think that the donuts are actually authorised by the university.

Unfair Competition

If the Hook ‘em Horns gesture is not a registered mark, the University would have to rely on unfair competition law under s.43(a) of the Lanham Act to prevent the donut shop from using the hand gesture shape. In order to do this, it would have to be shown that the Hook ‘em Horns gesture is capable of being registered. The mark is likely to be registrable as it does not fall foul of s.2 of the Lanham Act. The only issue may be existing registrations as this hand gesture is also used by fans of rock music, but such registrations are unlikely to cover donuts.

Donut Taco Palace is not looking for a fight

The University would then have to prove there is a likelihood of confusion, using the same Polaroid factors set out above. Again, it is unlikely that the shape of the donuts will result in people being confused as to source, as consumers are probably aware that these donuts are simply a form of allegiance rather than a University authorised product. 

The Donut Taco Palace should be able to sell their ‘Longhorn donuts’ as it is unlikely that they are infringing the University’s trade mark. The shop has changed the name of the donut to ‘El Toro’ but continues to make it in the same shape.  The owner stated, “It wastes time to fight back. It’s not worth it.” Unfortunately for the donut shop, this is a typical example of trademark law being abused by a party in a dominant position to the detriment of a small business owner.