EU General Court Invalidates Iceland’s Trade Marks

In a recent trade mark dispute with the country of Iceland, Iceland Foods has had its EU trade marks “frozen” by the General Court of the EU. The ruling held that geographical names are descriptive and should remain free for use by all. Our Intellectual Property team reviews the takeaways for the food and beverage sector.

The General Court of the EU has recently invalidated two registered EU trade marks (EUTMs) for ICELAND. These EUTMs were invalidated on the grounds of geographical descriptiveness. In doing so, the Court held that geographically descriptive names should remain freely available for use by all. While this is perhaps an unsurprising outcome, it will represent a major setback for Iceland Foods Limited (Iceland Foods), the supermarket chain headquartered in Wales which is one of the UK’s major food retailers and a well-known brand. We review the case and provide some takeaways for food and beverage companies.

Background

Iceland Foods filed a EUTM for the mark ICELAND in April 2002, protecting a wide range of goods in classes 7, 11, 16, 29, 30, 31 and 32 and services in 35. Similarly, in February 2013, it filed a EUTM for the figurative mark below protecting a wide range of food items in classes 29 and 30 and retail related services in class 35.

Íslandsstofa (Promote Iceland), the nation of Iceland and SA – Business Iceland (a confederation of Icelandic enterprises), in 2016, filed an invalidity application against the word mark.

This was followed in 2018, with an invalidity application against the above figurative mark. The invalidity argument was that the marks were descriptive of the geographical origin of the goods and services. The EUIPO Cancellation Division and the EUIPO Grand Board of Appeal invalidated both trade marks. The Grand Board of Appeal held that the marks were perceived by the relevant public, i.e. the English-speaking general public of the EU, as an indication that the goods and services at issue come from Iceland. Therefore, it took the view that the marks should not be registered. Iceland Foods appealed the decision.

General Court decision

1. Public interest concerns

The General Court commented that with geographical names, it is in the public interest that they remain available. This is not least because they may amount to an indication of the quality and other characteristics of the categories of goods concerned. In addition, they can also influence consumer tastes in various ways. For example, associating goods with a place which may give rise to a favourable response.

2. The relevant circumstances

The General Court further noted that knowledge of the geographical name “in the mind of the relevant class of persons” was an important factor. However, even if the relevant public does know of a geographical location, it does not automatically follow that the sign may serve to designate geographical origin. Instead, account must be taken of all the relevant circumstances, including:

• The nature of the goods or services designated.
• The greater or lesser reputation, especially within the relevant sector, of the geographical location in question and the relevant public’s greater or lesser familiarity with it.
• The prevailing customs or practices in the area of activity concerned, and
• The question to what extent the geographical origin of the goods or services at issue may be relevant, in view of the persons concerned, to the assessment of the quality or other characteristics of the goods or services concerned.

3. Link with the categories of goods or services

The General Court then proceeded to carry out an assessment of each of the categories of goods and services covered by the ICELAND trade marks, as follows:

• For the food and beverage products in classes 29 to 32, the Court noted that while Iceland the country may be mainly associated with fish, seafood, meat and dairy products, it produced other food products such as fruits, vegetables and herbs. Also, greenhouses, heated with geothermal energy might make it possible to reasonably expect a capacity for varied food production. In addition, class 30 goods which were not grown in Iceland such as cocoa, coffee, tea, rice, sago and tapioca could be processed in Iceland and adopted to local tastes. For those reasons, the Court held that the ICELAND marks were descriptive for those food and beverage goods.

• For the household appliance items in classes 7 and 11 such as dishwashers, washing machines and microwave ovens, the Court was satisfied that the ICELAND mark was capable of being perceived by the relevant public as an indication that those goods originated from Iceland. This was due to Iceland’s image being environmentally friendly and that the appliance items had characteristics linked to sustainability or eco-friendliness. Therefore, the ICELAND mark had a descriptive character for those goods.

• For the class 16 paper and printed matter related goods, the Court reached a similar conclusion, i.e. the relevant public would perceive the mark at issue as an indication of the geographical origin of the goods in class 16 or that they have an ecological dimension, linked to that geographical origin. Therefore, the ICELAND mark had a descriptive character for those goods.

• Lastly, for the class 35 retail services, the Court stressed that those retail services relate to food products, beverages and household goods, and are all produced in Iceland. Moreover, they may include fish, seafood or other ocean products. It was not disputed that Iceland is known as the country of origin for those goods. Therefore, the ICELAND marks had a descriptive character for those class 35 services.

Comment

The case serves as a health warning to food and beverage companies against using geographical names as trade marks. Iceland Foods has now lost its EUTM registrations for its own home brand and company name. That said, the same word and figurative marks remain registered by Iceland Foods in the UK. Food and beverage companies will also need to consider this decision when deciding on new product names and brand strategies. Whether or not this case will lead to further invalidation actions being filed against other EUTMs which contain geographical location names remains to be seen.

For more information and expert advice, contact a member of our Intellectual Property team.

The content of this article is provided for information purposes only and does not constitute legal or other advice.