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In September 2022, I considered some recent developments in the Iceland trade mark saga in this article.
Following those developments, the Grand Board of Appeal of the European Union Intellectual Property Office (‘EUIPO’) has dismissed the appeals of Iceland Foods Limited (‘Iceland Foods’) and decided to invalidate its ICELAND trade marks.
Background
The British chain of frozen food stores secured ICELAND as a trade mark in the EU, in a word and a stylised form. The registrations covered various goods and services, most of which were related to food and drinks, household items and retail services.
As a result of the supermarket’s attempts to stop the use of the word ‘Iceland’ by Icelandic entities, the Ministry for Foreign Affairs of Iceland and Icelandic organizations decided to invalidate both of the supermarket’s trade marks, arguing that registration of a country name should have never been granted to Iceland Foods.
After the Cancellation Division’s ruling in favour of the marks’ invalidity and following an oral hearing of the appeal at the EUIPO’s Grand Board, it has been confirmed that both registrations should in fact be cancelled as descriptive of a geographical name.
Appeal outcome
In its judgement, the Grand Board has confirmed that occasionally country names may in fact function as trade marks; however, the assessment of such names’ registrability must be approached with caution.
To determine whether a geographical name is registerable in principle, the Grand Board has considered how well the name is known to the consumer, how the name will be linked to the goods and services in question and which characteristics of the geographic place are designated by the name, in line with the guidance laid down in the Windsurfing Chiemsee decision.
It was also highlighted that it would be in the public interest to keep certain geographic names free for public use rather than monopolised by a particular entity through a trade mark registration.
In the present case, it has been found that the EU public is highly familiar with the country of Iceland due to its close geographical proximity and its EEA membership. The Grand Board has reviewed each specific category of the goods and services covered by the Iceland Foods’ registrations and concluded that all of them are close enough to the country of Iceland for the consumer to assume they originate from there.
Lastly, the Grand Board has agreed with the respondent, the country of Iceland, that “the country’s positive image which will be transferred onto the goods and services it offers”, emphasising Icelandic market’s “reputation for eco-friendliness, sustainability and reliability”.
The Board has also compared the present case to the Alaska and Montana judgments, where, by contrast, names of geographical locations were found registerable as being US regions rather than sovereign countries and situated over three-and-half times further away from Europe than Iceland, a country with strong ties with the European Union.
Furthermore, Iceland Foods argued that the marks have become distinctive in the EU through their commercial use; however, this claim was rejected on the basis that insufficient evidence was presented for Malta, Sweden, Denmark, Finland, and the Netherlands.
What happens next?
The appeal decisions do not mean that Iceland Foods cannot use the mark ‘Iceland’ on their supermarkets, but taking action against third party’s use of this word, or anything similar, would now pose a challenge for the supermarket chain.
As their final resort, Iceland Foods may still further appeal the decisions to the CJEU.
A representative of the supermarket chain mentioned that they were “disappointed in the decision delivered by the EUIPO”, adding that “this decision, which is open to appeal, will not change [Iceland Food’s] business name, operation or trading in any way”.
Comment
These cases demonstrate that any marketing decisions to adopt a geographical name as a trade mark should be made by businesses prudently, as there could be a serious risk of losing registered rights, if acquired.
Nonetheless, geographical names are still not completely excluded from protection. Each case should be looked at individually, taking into account all of the applicable factors, including, for example, how removed the place name is from the actual geographical origin of the goods or services at issue, both contextually and literally, as well as how familiar would the relevant consumers be with the chosen geographical name.
