Earlier in the month, the EU General Court issued its decision
on Iceland Foods Ltd’s appeal of a decision of the Grand Board
of Appeal of EUIPO to invalidate an EU trade mark registration for
the ICELAND word mark. The decision follows settled EU case law on
geographical designations but is a good ‘refresher’ on
geographical names and a springboard for reflections on opposition
strategy and the unitary character of the EUTM system.
Background
Iceland Foods Ltd is the owner of the supermarket chain ICELAND,
founded in 1970 in Wales, UK. It is a major food retailer in the UK
market with over 900 stores and operates or franchises a further 40
stores across Europe, particularly Ireland.
In 2002, the supermarket chain applied to register the ICELAND
word mark as an EUTM for a wide range of goods and services in
several classes. The EUTM eventually registered in 2014 and in
2015, Iceland Foods Ltd proceeded to oppose an EUTM application by
Íslandsstofa (Propmote Iceland) for the stylised mark
INSPIRED BY ICELAND for a range of goods and services including
some in the foodstuff classes. Íslandsstofa (Propmote
Iceland) retaliated by seeking the invalidation of Iceland Foods
Ltd’s EUTM for the ICELAND word mark in 2016, and of a later
logo mark for ICELAND in 2018, on the basis that the marks were
descriptive of the he geographical origin of the goods and
services.
Íslandsstofa (Propmote Iceland)’s invalidation
actions were successful both before the EUIPO’s Cancellation
Division and the Grand Board of Appeal. Iceland Foods Ltd proceeded
to further appeal the decision before the EU’s General Court in
2023. The International Trademark Association (INTA) also sought
and secured permission to join the appeal as intervener, concerned
about the prospect of the decisions to date being seen as a de
facto prohibition on the registration of the names of
countries as trade marks.
The GC decision
The General Court agreed with the Cancellation Division and the
Board of Appeal that the relevant public will establish a link
between the goods and services in question and ICELAND as
indicating their geographical origin or certain characteristics of
theirs specifically linked to that geographical origin. The
Court’s decision borrows predominantly from Windsurfing
Chiemsee.
In brief, the EUIPO’s core arguments, which were maintained
by the General Court, were:
The geographical name ‘Iceland’ enjoys a high level of
recognition among the relevant public; and
The characteristics of Iceland as a country were such that the
country would be linked (in 2002) with the good/services.
The relevant public would therefore reasonably perceive ICELAND
as a geographical indication or an indication of certain
characteristics of the goods/services linked to the country.
Unpacking those points a bit more, the General Court was
satisfied that the Grand Board of Appeal was correct on its
conclusions that Iceland was:
an environmentally friendly country with multiple geothermal
and hydroelectric power stations;
a popular tourist destination supported by a 2015 survey in
Denmark, France, Germany and the UK;
producing a reasonably wide range of goods supported among
others with information on exports from Iceland to the EU during
1999-2014.
Coupled with the settled point that a mark may be seen in trade
as a geographical indication not only in circumstances where the
specific location is already famous or known for the goods/services
at issue but also where it is reasonable to assume that, in the
future, they will be used by undertakings as indications of
geographical origin of the category of goods or services concerned,
the writing was on the wall [or ice] for Iceland Foods Ltd.
The decision also addressed INTA’s submissions regarding the
Grand Board of Appeal’s decision precluding the registration of
country names as trade marks, which revolved around the assertion
that geographical names, including country names, should remain
freely available for all. The Grand Board of Appeal emphasised that
they had carried out a detailed analysis of the descriptive
character of the mark in respect of all of the goods/services in
question and that the decision is in the public interest, ensuring
Icelandic entities may use the name ‘Iceland’.
Takeaways
A key clarification from the decision is that knowledge of a
geographical location alone does not automatically mean that the
name would be perceived as a geographical designation in trade is
helpful. The specifics of each case matter as does the question
whether it would be reasonable for the relevant public to link the
geographical location with the goods/services.
On opposition strategy – and with the benefit of hindsight
– one suspects that Iceland Foods Ltd would probably
reconsider its 2015 decision to oppose Íslandsstofa
(Propmote Iceland)’s EUTM application for the INSPIRED BY
ICELAND mark. There were undoubtedly legal arguments in favour of
the opposition, but just because one can do something does not
always mean they should and enforcement for the sake of it may
prove as problematic as non-enforcement.
Finally, the unitary character of the EUTM system can be a curse
as much as a blessing for businesses. In the case at hand, the
history and extent of use of the ICELAND mark by the supermarket
chain in the UK was not replicated across all EU Member States that
formed the relevant public and that was enough to cancel Iceland
Foods Ltd’s EUTM. For parties that may have strong rights/use
in one or even some of the EU Member States, it does not
automatically mean that their rights at EU-wide level match the
strength of their national rights (in EU jurisdictions) and under
certain conditions, their EUTMs may be potentially vulnerable
despite strong presence and rights in one or more EU countries.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.