ICELAND left out in the cold by the General Court

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:

1. The geographical name ‘Iceland’ enjoys a high level of recognition among the relevant public; and
2. 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.

This article was written by Partner & Trade Mark Attorney Apostolos Dakanalis.