UK supermarket chain Iceland Foods has lost its appeal against an EU Intellectual Property Office (EUIPO) decision that prevented it from trademarking the word ‘Iceland’ in a long-running dispute with the Icelandic government.
The EU General Court upheld the EUIPO’s Grand Board of Appeal’s decisions to cancel the Iceland figurative and word trademarks filed by the supermarket chain.
It reaffirmed and agreed with the Grand Board of Appeal that geographical names must remain available for public use – not only because they may indicate the origin, quality or characteristics of goods, but also because they may “influence consumer tastes by, for instance, associating the goods with a place that may give rise to a favourable response”.
The case dates back to 2016, when Íslandsstofa (Promote Iceland) asked for the word and figurative marks Iceland to be declared invalid in relation to goods and services, for among others, household appliances, food, beverages, paper goods and retail services.
The case hinged on the alleged descriptiveness of the marks in relation to the goods and services applied for. The Icelandic government argued that the trademarks hindered its businesses in marketing their own goods and services.
Descriptiveness is a key absolute ground for refusing to register a trademark and is designed to prevent businesses from monopolising common descriptive terms to ensure they remain available for others to use.
Iceland Foods, which was supported by the International Trademark Association (INTA), appealed the Grand Board of Appeal’s 2022 decision, stating that despite there being no EU legislation that prevented the names of countries being used as a trademark, the decision had nevertheless effectively imposed such a prohibition.
However, the General Court has now said that it is not permissible to register geographical names as trademarks where they refer to well-known places that are already closely linked to the type of goods and services being offered.
Evidence showed that the country of Iceland produced a wide range of goods and services in the classes where the contested trademarks were filed, even coffee in Class 30.
The General Court’s judgment conceded that, as the supermarket claims, these goods are not grown in Iceland; however, it maintained the Grand Board of Appeal had correctly stated that they could be processed there and adapted to the local taste.
“These rulings reinforce the importance of keeping geographical terms accessible and highlight the balance between trademark protection and public interest,” EUIPO commented.
“These cases are particularly significant as they mark a milestone in the history of the EUIPO Boards of Appeal. It was during these appeal proceedings that the Grand Board of Appeal conducted an oral hearing for the first and, to date, only time.”
Commenting on the case, Varuni Paranavitane, counsel at Finnegan, said that brand owners will need to tread more carefully when considering a brand name or logo under which to bring a product or service to the EU market.
She added: "The decision could result in brand owners taking a more restrictive approach to their marketing and brand strategy. It also opens the door for invalidation actions to be filed for those EU trademarks which contain elements of geographic locations."
Email your news and story ideas to: [email protected]
