Insights

In two separate decisions of the 15 December 2022, Iceland Foods Ltd v Íslandsstofa (Promote Iceland) and others (Case R 1238/2019-G) and Iceland Foods Ltd v Icelandic Trademark Holding ehf (Case R 1613/2019-G), the European Union Intellectual Property Office (the “EUIPO“) Grand Board of Appeal confirmed that the EU word mark ICELAND and the EU figurative mark incorporating the text ‘Iceland’ had been registered contrary to Article 7(1)(c) of the EU Trademark Regulation (Regulation No. 2017/1001) (the “EUTMR”). Article 7(1)(c) prohibits the registration of trademarks that consist exclusively of signs or indications which, in trade, serve to designate, inter alia, the geographical origin of the goods or services for which registration is sought. The trademarks, both of which were registered in the name of the UK supermarket chain ‘Iceland Foods Ltd.’, have consequently been cancelled from the EU Trademark Register.

Background of the Cases – The EUIPO Cancellation Division’s Decision

In 2016, several entities associated with Iceland (the country), including the Icelandic Ministry of Foreign Affairs, brought forward a claim to invalidate the following trademarks that had been registered since 2014 by Iceland Foods (the UK supermarket chain), arguing it impacted the ability of Icelandic businesses to refer to their place of origin when marketing their own goods and services:

• A EU word mark for ICELAND, registered in 2014 in classes 7, 11, 16, 29, 30, 31, 32, and 35; and
• A EU figurative mark incorporating the text ICELAND, also registered in 2014 and in classes 29, 30 and 35.

The EUIPO’s Cancellation Division declared both trademarks invalid in 2019, on the basis that they were descriptive of the geographical origin of the goods and services covered by the registrations in terms of Article 7(1)(c) of the EUTMR. Iceland Foods subsequently appealed, arguing that it was unlikely that consumers would misunderstand the term “ICELAND” as referring to the origin of the goods and services sold by them under those trademarks, and that the name had acquired distinctiveness through almost fifty years of use. Consequently, the First Board referred the case to the Grand Board of Appeal for its decision.

The EUIPO Grand Board of Appeal Decisions

In two separate decisions of the 15 December 2022, the Grand Board dismissed Iceland Food’s appeals and confirmed the earlier findings of the Cancellation Division that the marks had been registered contrary to Article 7(1)(c) of the EUTMR.

In coming to its decision, the Grand Board based itself, inter alia, on the principles established in the landmark case of Windsurfing Chiemsee Produktions v. Boots (Case C 108/97), confirming that geographical names can, in principle, be registered in terms of Article 7(1)(c). This, however, should only apply to trademarks consisting of geographical names which are either:

• unknown to the relevant public as designating a geographical place, or
• which by reason of the ‘nature’ of the place they designate, it is unlikely that the public would believe that the goods or services originated from that place.

Examples of geographical names that have been accepted for registration include “HOLLYWOOD” for chocolates, cocoa products and confectionary products; “GREENLAND” for fresh fruits and vegetables, as well as “DENVER” for lighting equipment. Conversely, the EUIPO (previously OHIM) has refused applications for “BRASIL” covering, inter alia, beers and other beverages, “AUSTRALIA” for clothing, sporting articles, vehicles (amongst other items), and “MONACO” for furniture.

In Chiemsee, it was held that the assessment should focus primarily on the following factors: the degree of familiarity with the geographical name, the characteristics and reputation of the place, and the relevant category(ies) of goods and services and whether they have any link with the place. Applying these principles to the facts of this case, the Grand Board’s reasoning has been summarised below:

• The concept of public interest:

When assessing the descriptive character of a trademark consisting of a geographical name, the concept of public interest which underlies Article 7(1)(c) must also be considered, because trademark registration effectively grants the proprietor monopolistic use of that registered trademark. This requires that signs or indications which may serve to designate the origin or characteristics of the goods or services in respect of which registration is sought, should remain freely available to all undertakings so that they may also use that geographical name to describe their own goods or services.

Referring to the Chiemsee case, the Grand Board explained that it is in the public interest to keep such geographical names unregistered, so that they can be used by businesses and traders as an indication of the origin, quality or other characteristics of the categories of goods and services concerned, enabling them to compete effectively on the market. “The monopolisation of a country name cannot lead to the inequitable situation in which traders with real and genuine connection to a certain geographic location are forced to constantly ‘look over their shoulder’ when referring to the real geographical origin of goods and service,” said the Grand Board.

• The relevant public’s degree of familiarity with the geographical name:

In terms of Article 7(1)(c), names designating geographical places that were already well-known or well-known for the category of goods or services concerned, and that were therefore linked to that category in the perspective of the relevant public (i.e., ‘the relevant consumer’ in the territory(ies) where the earlier rights are protected – in this case, within the EU) are excluded from registration.

In the present case, the Grand Board considered that the relevant public recognised Iceland as being geographically located in Europe, and additionally, the name designates a country which is a Member State of the European Economic Area and an important economic partner of the EU. Therefore, unlike smaller geographical regions which might be known only locally or on a very small-scale and which are not part of Europe, the Grand Board concluded that the degree of familiarity of the relevant public with the geographical name ‘Iceland’ was very high. In fact, a key aspect of the Grand Board’s decision was that it rejected Iceland Food’s arguments that earlier trademark registrations such as ‘ALASKA’ defended and allowed for the registration of geographical names. The Grand Board emphasised that the situation was different in this case, holding that “Iceland is a sovereign state, whereas Alaska is a region of the United States… [and] over three-and-half times further away from mainland Europe”.

• The characteristics of the place designated by name:

Based on the test established in Chiemsee, the particular characteristics of the place must also be considered to determine whether a geographical name is registerable as a trademark. After considering the evidence submitted by both parties, the Grand Board found that the geographical name ‘Iceland’ projects positive associations including of eco-quality, sustainability and skilled labour, and that the nation had worked hard to build this “environmentally sustainable and clean image” over several years. These characteristics, the Board held, were liable to add value to goods and services which may be marketed abroad by businesses actually originating in Iceland. This was treated as a further argument in favour of the public interest for ensuring that the use name ‘Iceland’ was not monopolised by any particular person but remained free for others to use.

• The link of the geographical name with the goods and services:

Iceland Foods submitted that the goods or services for which the marks were registered had no particular link with the nation of Iceland, and should therefore not be considered as descriptive, non-distinctive nor deceptive. However, the Grand Board found that since the relevant goods for which the marks had been registered included food (even frozen food), drink and packaging, while the services included retail services – in each case it was reasonably foreseeable that the relevant public could assume that all the goods and service at stake may originate from Iceland or have a particular link with that country. This, the Board held, was liable to have an influence on the purchasing decisions of the relevant public.

Based on the above factors, the Grand Board of Appeal dismissed the appeal and confirmed the 2019 decision of the Cancellation Division; concluding that these “ICELAND” trademarks (both word and figurative) were descriptive and non-distinctive and must therefore be cancelled.

Concluding Remarks

The Grand Board’s decisions have been described as a big blow to the UK supermarket chain, as a result of which Iceland Foods can no longer rely on these EUTM registrations to prevent other companies from using the word ‘Iceland’.

While the decisions have provided a certain degree of clarity in this area of trademark law, prospective brand owners must now be more mindful when it comes to attempting to register the names of countries, regions or other geographical terms in the future, even if there already has been pre-existing use on their part (as was the case with ‘Iceland’). Given that the decisions can be appealed, and the importance of the brand name to Iceland Foods, it will be interesting to see whether we will hear more of this dispute in the months to come.

The article was first published on The Malta Independent (18 January 2023)