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Microsoft v MikeRoweSoft and Iceland v Iceland: Five of the strangest trademark disputes

Sophie Christie
The Icelandic government launched a lawsuit against the British supermarket in a bid to make the chain give up its name - PA Wire

Poundland is in the middle of a legal dispute with US food giant Mondelēz over the trademarking of the Toblerone chocolate bar.

The budget retailer has claimed that Toblerone is no longer distinctive enough to be a valid trademark, as it attempts to defend its right to launch its own bar Twin Peaks.

The legal wrangle is one of many brand name battles over trademarks. We take a look at five of the biggest - and most surprising - below.

Iceland v Iceland

The Icelandic Government last year launched legal action against Iceland, the British frozen goods supermarket, over the trademark of its name.

It said that it was pursuing the case in the courts because the supermarket had stopped Icelandic companies from using the word "Iceland" to describe themselves, and that it had "aggressively pursued and won multiple cases" against Icelandic companies that use the word in their products. 

The British frozen food giant owns the Europe-wide trademark registration for the word "Iceland", but the Icelandic government said that this was "exceptionally broad and ambiguous in definition, often rendering the country’s firms unable to describe their products as Icelandic".

Sir Malcolm Walker, founder and chief executive of Iceland Credit: Andrew Price/REX

Iceland Gold, a company that sells fish, and Clean Iceland, which sells products from the Nordic nation wholesale, have both tried and failed to register their names with the EU. 

The legal dispute is ongoing and will likely take years to resolve following a number of failed talks between both parties.

Microsoft v MikeRoweSoft

In 2003, Canadian student Mike Rowe set up a website under the domain name MikeRoweSoft.com, deliberately adding "soft" at the end because of the humorous phonetic pun.

But it didn't take long for Microsoft to find out, and it demanded Mr Rowe give up the domain name because it considered it to be a trademark infringement because of the phonetic resemblance to its corporate name.

After receiving legal papers from the tech company, Mr Rowe, who was 17 at the time, asked to be compensated for giving up the domain. Mircrosoft offered $10 (£7.75), which Mr Rowe rejected and responded with a request for $10,000.

Microsoft declined the offer and sent a cease and desist, accusing Mr Rowe of setting up the site in order to procure a large financial settlement. 

Thanks to a significant amount of media attention at the time, Microsoft ended up compensating the teen for an undisclosed sum, in exchange for him giving up the domain name.

Elvis Presley v BrewDog

British craft brewer BrewDog lost a legal battle with the estate of Elvis Presley this summer over the name of one of its beers.

After launching "Elvis Juice" in 2016, the Presley estate entered a trademark dispute with the brewer, demanding that it drop the name of its beer because of its association with "The King".

Brewdog launched 'Elvis Juice' in 2016, but Punk IPA is its biggest seller

In response, BrewDog’s founders, James Watt and Martin Dickie, changed their names by deed poll to Elvis to prove that the name was not exclusive and could be used by anyone. The pair insisted that the name of the beer had nothing to do with the singer.

However the company ultimately lost the battle because the Elvis estate owns the Elvis trade mark for goods that include beer.

BrewDog to open beer hotel

WWF v WWF

Another legal trademark spat featured the World Wildlife Fund and the World Wrestling Federation, which squabbled over the use of the acronym "WWF".

In 2001, the UK Court of Appeal ruled that the federation had breached a 1994 agreement with the World Wildlife Fund that bars the wrestling group from using the WWF acronym.

A spokesman for the World Wildlife Fund, which registered the trademark WWF in 1961 when it was founded, said the wrestling group had breached the agreement "countless, thousands of times."

After challenging the ruling, the wrestlers eventually gave up the fight and rebranded to World Wrestling Entertainment, or "WWE".

The wildlife charity disliked its association with wrestling Credit: David Monteith-Hodge

McDonald's v McCurry

McDonald's sued a small family-run Malaysian restaurant named McCurry in 2001, because it claimed that the use of the "Mc" prefix infringed its trademark.

The defendant claimed that McCurry, which was established in 1999, stood for Malaysian chicken curry and had no connection with the fast food giant.

In 2006, McDonald's won an initial judgment in the High Court after a judge ruled that the Mc prefix and the use of colours distinctive of the McDonald's brand could confuse and deceive customers.

McDonald's sued McCurry because it claimed that the use of the "Mc" prefix infringed its trademark Credit: Goh Seng Chong/Bloomberg

However, in 2009 an Appeal Court panel overturned the verdict on the grounds that there was no evidence to show that McCurry was passing off its own product as that of McDonald's. McDonald's appealed the decision but it was upheld by the Federal Court.

Lawyer Sri Dev Nair, who represented the Malaysian restaurant, said at the time: "It is the end of the road for McDonald's. McCurry can use the prefix.

"McCurry and McDonald's are two different businesses which sell different types of food and they have different customers," he added.

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