Iceland, the land of fire and ice, is taking on Iceland, the purveyor of frozen chicken tikka lasagne, in a major trademark battle. The Icelandic government launched legal action against the British supermarket last week, arguing that the grocery chain, which owns the Europe-wide trademark registration for the word Iceland is preventing Icelandic companies from promoting themselves abroad.
The contest is one of many brand name legal battles offering more entertaining plot points than your average box set. We look back at six of the best:
Elvis Presley v BrewDog
Elvis Presley may have died (or so most of us believe) in 1977 but his name lives on, and sometimes not in quite the way the guardians of his estate would like. This year the Presley estate entered a trademark dispute with Scottish brewer BrewDog, demanding it drop the name of its beer brand “Elvis Juice IPA”. In response, BrewDog’s founders, James Watt and Martin Dickie, have changed their names by deed poll to Elvis so they can argue they named the beer after themselves. Watt and Dickie explained in a pun-strewn press statement that they were “caught in a trap” and advised the “grey-suited hound dogs” at the Presley estate divert their attention to “another potential source of quick remuneration: a brewery that calls itself ‘The King’ of beer”.
Apple Corps v Apple Computer
When he named his company Apple, Steve Jobs must have foreseen he’d attract the attention of Apple Corps, the holding company founded by the Beatles in the late 1960s. In 1978, two years after Apple Computer launched, Apple Corps, owner of the Beatles’ record label Apple Records, sued it for trademark violation. In 1981 they settled with the understanding that Apple Computer would never enter the music industry. Needless to say, this settlement didn’t last. The dispute came to a head after Apple unveiled iTunes in 2003 and it wasn’t put to rest until 2007 when it was agreed Apple Inc, the company dropped “Computer” from its name that year, would own of all the trademarks related to “Apple” and would license certain trademarks back to Apple Corps, including Apple Corps’ granny smith logo. The Beatles’ back catalogue finally became available on iTunes in 2010 after years of negotiations. Jobs, a Beatles fan, described the whole saga as a “long and winding road”. As the most valuable brand in the world, according to branding consultancy Interbrand, Apple can easily afford such wrangles, but there’s a lesson here for the rest of us. “When creating your brand name, from the very beginning you need to look at where your brand might be going in the future,” advises Rebecca Robins, global director at Interbrand.
WWF v WWF
When wrestling company Titan Sports changed its name to the World Wrestling Federation it was drawn into a legal fight with another WWF, the World Wildlife Fund, that lasted 13 years. The conservation charity took action to protect its brand from what it described as an “unsavoury” connection with wrestling, and, in 2001 a court in London ruled in its favour. Not one to take a beating lying down, the World Wrestling Federation challenged the ruling, and, after that was dismissed, it threatened to appeal. The wrestlers eventually gave in and spent millions rebranding to World Wrestling Entertainment, WWE. It also used the line “Get The ‘F’ Out” as a marketing slogan. After the World Wildlife Fund’s victory, a spokesman for the charity said: “It’s been the wrestlers against a cute little panda bear. And the panda won.”
Victoria Beckham v Peterborough FC
In her previous incarnation as a Spice Girl, Victoria Beckham found an unlikely sparring partner in the form of football club Peterborough United. In 2002, Beckham opposed Peterborough United’s attempt to register “Posh”, the club’s nickname, as a trademark, with her publicity company claiming that the word was “inexorably associated with her in the public’s mind”. The club contested that it had been using its Posh moniker since the 1930s and Beckham’s challenge was overturned. “People get very attached to a name they’ve either adopted or used for aeons and they feel they have a God-given right to it,” says Michael Johnson, founder and creative director of branding and design consultancy Johnson Banks. “It’s pretty ridiculous that Victoria Beckham even considered she owned the word ‘posh’, and Peterborough claiming they own it is also dodgy. Posh is a word.”
Instagram v LitterGram
Combating Britain’s litter problem was Danny Lucas’s goal when he founded LitterGram, an app that encourages users to share and geotag pictures of litter they see on the streets and report it to their local council. However, his app came to the attention of lawyers for Instagram and its owner Facebook who told him in September to change the name or face a lawsuit. They argue the use of “gram” in the title could undermine the world’s most famous photo-sharing site’s brand. Lucas says: “They’ve said ‘change your name’ and they’ve given us deadlines which have come and gone. We make an appeal and they don’t respond.” He has delivered a public plea to Facebook founder Mark Zuckerberg claiming the “unreasonable demands that we rebrand will kill our momentum”, and last month it was announced that Instagram had dropped the case.
Facebook takes brand protection seriously, as evidenced by a previous wrangle it had with a teacher’s community website in the US called Teachbook in 2010 for using the word “book” in its name. In the end Facebook agreed to drop its trademark suit after the group changed its name to TeachQuest.
Starbucks v Sambucks
Starbucks has not been one to shy away from trademark battles with considerably smaller adversaries. The world’s largest coffee chain once went after a restaurant in British Columbia because it was called HaidaBucks and took a Texan bar owner to court over a beer he brewed and sold named Star Bock. Sam Buck Lundberg, a coffee shop owner in the small town of Astoria in Oregon, didn’t have long to wait for her Starbucks order when she used her name to brand her shop “Sambucks”. Starbucks sent her a cease and desist letter and reportedly offered her $500 (£400) to rebrand, but when she didn’t comply the case went to court. In 2005, a judge ruled in favour of the coffee giant, ordering her to drop the name “Buck” from everything in her store, including the coffee cups and the front window. Lundberg’s verdict? After the ruling she told ABC News: “People think this is a crock of crap.”
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