Can't Trademark 'Northern Lights' District Court Rules

A hotel operator in Grindavík can’t claim sole use of the phrase ‘Northern Lights’ and prevent other hotels and tourism service providers from using it in their own branding, RÚV reports. The District Court of Reykjavík ruled on the matter on Friday, saying that ‘Northern Light’ is too common a phenomenon for a company to be allowed to trademark the English term. Allowing one Icelandic company the exclusive right to ‘Northern Lights’ (or even ‘Northern Light’ in the singular) would be a disproportionate restriction to impose on other guest accommodation providers.

Too Broad a Term to Trademark

The owners of Northern Light Inn in Grindavík, South Iceland requested that a ban be imposed on Grótta Northern Lights Apartments and Rooms in Seltjarnarnes, just outside of Reykjavík, preventing the latter business from using the English phrase ‘Northern Lights’ in their name. The Grindavík hoteliers registered the phrase ‘Northern Light’ as a trademark in 2006 and believed that the Seltjarnarnes hotel’s use of it in their name, even in the plural, was an infringement on their exclusive right to the term. The matter was taken to the county magistrate, who imposed a ban on other businesses using the name. (At time of writing, the hotel was using the English name ‘Grótta Aurora Lights,’ presumably due to the standing ban.)

The magistrate’s decision has now been reversed by the District Court in Reykjavík. Reserving exclusive use of the term ‘Northern Light’ for one hotel in Iceland would mean that the trademark holders would be able to prevent businesses across the tourism sector to refer to the northern lights in their English-language marketing or publicity materials, regardless of what services they were offering, said the judge. ‘Northern Light(s)’ is a term that is “closely related to services that it’s well-known that tourists seek out in Icelandic tourism.” The fact that the trademark was for the phrase ‘Northern Light’ in the singular changes nothing, the judge continued, and nor had the plaintiffs in Grindavík proven that tourists had confused the hotel in Seltjarnarnes with the one in Grindavík because they both use ‘Northern Lights’ in their name.

This isn’t the first time that there’s been a scuffle over the attempted tradmarking of a commonly used term or phrase in Iceland. In one notable example in 2018, Icelandic cartoonist Hugleikur Dagsson was not allowed to sell t-shirts he designed in honor of the Iceland’s World Cup-qualifying football team because the caption on the shirt was a trademark violation. Hugleikur’s ‘Man Celebrating,’ shirt showed a man in Iceland’s team uniform doing the now-famous ‘Viking Clap’ and shouting “HÚ!” However, Gunnar Þór Andrésson, a sports trainer at the Landspítali Hospital, claimed that the caption was too close to the exclamation “HÚH!” which he’d trademarked.