Contributors
In December 2022, the European Union (EU) Intellectual Property Office (IPO) Grand Board of Appeal decided to cancel EU trade mark registrations belonging to Iceland Foods Limited (IFL) for ICELAND and the figurative mark.
The Grand Board confirmed the earlier invalidity decisions stating that the marks in question would be perceived by the relevant public as indicating that the goods and services provided under the marks originate from Iceland, as opposed to from IFL.
The decision (at publishing, still subject to appeal) could mean that IFL loses all of its EU-wide registered trade mark protection for its key brand; these are the only EU trade mark registrations belonging to IFL on record.
Against a backdrop where filing subsequent applications for identical marks and identical goods can be considered 'bad faith' where it aims to give evergreening protection, this is an unfortunate situation in which many businesses could find themselves.
The applications
Under EU trade mark law, companies and individuals can register words, logos, slogans and others which are capable of enabling customers to distinguish the goods or services provided by them throughout the EU.
IFL, the UK-based supermarket chain, applied to register the word "ICELAND" in the EU in April 2002. Following a lengthy legal battle – which included overcoming objections from the EU IPO, and fending off five oppositions brought by third parties – registration was finally achieved in December 2014. In the intervening period, IFL had also filed for the figurative mark in March 2013; it was registered in September 2014 after the withdrawal of a third party opposition.
Cancellation actions
Some years later, in November 2016, representatives for Iceland as a country – Islandsstofa, The Icelandic Ministry for Foreign Affairs and SA – Business Iceland (Interested Parties) – applied to invalidate IFL's trade mark registration for "ICELAND"; a separate invalidation application followed in January 2018 in relation to the figurative mark. The Interested Parties argued that the trade marks are devoid of distinctive character, and could be understood to describe the geographical origin of the goods and services.
IFL submitted evidence showing its extensive use of the trade marks and argued that, as it is one of the largest supermarkets in the UK and sells its goods in the EU, the marks containing the wording ICELAND had acquired distinctiveness through use. This meant that, when customers saw the trade marks, they immediately thought the goods related to IFL – and not Iceland, the country.
In mid-2019, the EU IPO Cancellation Division held the trade marks to be invalid. It held that it is in the public interest that signs that may serve to designate the geographical origin (such as a name of a country) of goods or services remain available, because they may be an indication of the quality and other characteristics of the categories of goods concerned and may influence consumer preferences.
IFL appealed these decisions, which were then sent to the First Board of Appeal. Considering that these cases raised important legal issues relating to the scope of a trade mark consisting of a sign of a geographical name, it referred them to the Grand Board of Appeal. In particular, the First Board asked for clarification on:
- The role and balance between public interest, fair competition and the right to property in relation to a geographical objection
- The scope of an objection where a geographical name projects a positive quality and character in general – and the limits that apply to the same.
The Grand Board's decision
The Grand Board of Appeal received lengthy legal submissions from IFL and the interested parties, and from other concerned groups such as Fisheries Iceland, International Trade Mark Association (INTA) and the Swiss Association Against the Misuse of Swiss Indications of Source. The submissions made by the Swiss and Icelandic organisations supported the EU IPO's initial decision to invalidate the trade marks. However, INTA argued that countries do not have an exclusive right to geographic terms and country names can be registered as trade marks provided they are distinctive.
The Grand Board found against IFL, confirming the invalidity decisions. In its view, the two marks in question are perceived by the relevant public as indicating that the goods and services provided under the marks originate from Iceland. In this case, the interested parties presented substantial evidence to show that Iceland's brand (as a country) was strong, showing that it was held in 2017 to be the world's most valuable nation brand. Although not a member of the EU, Iceland was noted as having deep economic and cultural ties with the EU, thus leading to the finding that, when consumers in the EU see "ICELAND" on a product or in relation to a service, they would automatically think of the country and not of IFL.
However, the Grand Board confirmed that this does not mean that country names are not inherently registrable as trade marks. It is necessary to take into account all the relevant circumstances, such as the nature of the goods or services designated, the greater or lesser reputation, especially within the economic sector involved, of the geographical location in question and the relevant public’s greater or lesser familiarity with it, the customs obtaining in the area of activity concerned and the question of to what extent the geographical origin of the goods or services at issue may be relevant, in the view of the target public, to the assessment of the quality or other characteristics of the goods or services concerned.
Comments
Given IFL has been fighting for over twenty years for these registrations, and the case has peaked the interest of authorities and industry bodies alike, it would be no surprise if IFL appeals the Grand Board's decisions to try to maintain its registrations.
