EU Iceland rulings set ground-breaking precedent on country names as trade marks

Out-Law News | 19 Jan 2023 | 3:42 pm |

The Grand Board of Appeal of the EU Intellectual Property Office (EUIPO) has upheld a decision to cancel UK supermarket Iceland Food Ltd’s EU-wide trade mark for the word ‘Iceland’, in rulings that will make it more challenging to register the name of a country as an EU trade mark, an expert has said.

The decision is a “genuinely ground-breaking” one according to trade mark expert Celia Tao of Pinsent Masons, as the Grand Board rarely gets involved in cancellation proceedings and “only when the issues are somewhat unprecedented and of general importance”.

The supermarket appealed to the Grand Board after the cancellation division of the EUIPO in 2019 declared two of its trade marks - its Iceland brand name and its well-known Iceland figurative mark – to be invalid in the EU. The cancellation division had done so following a request for a declaration of invalidity from a number of parties, including the government of Iceland.

Tao said: “The decision follows an oral hearing of the Grand Board – the first ever – which is a further ground-breaking aspect of these proceedings”.

Upholding the cancellation division’s decision, the Grand Board confirmed that Iceland Food’s EU trade marks incorporating the word ‘Iceland’ were descriptive of the geographical origin of the goods and services. The two marks had therefore been registered in breach of the EU Trade Mark Regulation, specifically the provision that prohibits the registration of trade marks that consist exclusively of signs or indications which serve to designate the geographical origin or the goods or services for which registration is sought.

The Grand Board reached its conclusion after detailed assessment of the goods that the country Iceland could produce and export, and the positive consumer perception around the country Iceland’s brand. The board also relied on the evidence that the term ‘Iceland’ would be perceived as referring to a country in at least the UK, Ireland, Denmark, Finland and Sweden. 

However, Tao noted that the Grand Board did not rule out the possibility of registering country names as trade marks entirely.

“The key takeaway from this decision is that registering a country name as a European Union trade mark may not be impossible but will certainly be extra challenging from now on, as the Grand Board of Appeal indicated that these issues will have to be approached ‘with caution’ by the EUIPO,” she said.

In its decision, the EUIPO took into consideration the concept of public interest. It discussed difficulties around country names being monopolised and emphasised the public interest aspect of this case. It pointed out that traders with a real and genuine connection to the country Iceland should not be forced to constantly “look over their shoulder” when referring to the name of the country for fear of being sued for trade mark infringement. 

“The EUIPO demonstrated that this was not just a theoretical risk but a real world one by highlighting that Iceland Foods had already enforced its trade mark registrations against ‘Iceland Gold’ and ‘Inspired by Iceland’, which are owned by Icelandic entities Iceland Seafood International and Íslandsstofa respectively,” said Tao.

Íslandsstofa is one of the applicants which filed the request for a declaration of invalidity with the EUIPO’s cancellation division in 2016.

In reaching its conclusion, the Grand Board also considered that the test for geographical descriptiveness of a country name is a “multifactorial” one, with key factors including the relevant public’s degree of familiarity with the geographical name, the characteristics of the place designated by name, and the link of the geographical name with the goods and services. All factors in this case allowed it to reach the conclusion that “Iceland” is capable of designating the geographical origin of the goods at issue.

In addition, the sign was found liable to be used in the future as an indication of the geographical origin of the goods, given that the word “Iceland” is associated with the sustainable and eco-friendly characteristics of such goods.

“Interestingly, the Grand Board confirmed that it is not a pre-condition for a country name trade mark to be challenged on the basis of descriptiveness that the country in question already has a reputation in relation to the goods/services concerned. The decision also shows that EUIPO will accept arguments that a wide range of goods and services can be produced or provided by a country hypothetically, even those for which the country is not generally well-known,” Tao said.

In the Iceland case, the UK was a relevant jurisdiction because it was part of the EU at the filing date in 2002 and the cancellation proceedings started in 2016. However, this decision serves as an indication of the potential effect Brexit could have on future trade mark cancellation proceedings involving UK based businesses in the EU, said Tao.

“Brexit did not play a big role in this decision as UK based evidence was accepted in this specific case because the filing date of the marks and the cancellation case both pre-dated Brexit. In the future, however, businesses who mainly operate in the UK will face an uphill struggle in resisting cancellation proceedings before the EUIPO as they are now no longer able to rely on their use and reputation of their trade mark in the UK,” she said.

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