Back in December 2016, I wrote a post for the IPKat blog about a dispute over the ICELAND trade mark. Six years on, we now have two decisions of the EUIPO Grand Board of Appeal in cases concerning EU trade mark registrations for word and figurative marks.
The Grand Board is called into action when the regular Boards of Appeal believe an issue is particularly important or controversial. In this case, unusually, an oral hearing took place in September 2022, which was streamed online. The Board handed down its decisions in the two cases (R1238/2019-G and R1613/2019-G) on 15 December 2022.
Word and figurative marks
The two trade marks at issue were filed by Iceland Foods Limited, which operates supermarkets in the UK and several EU Member States, in 2002 and 2013 respectively. The word mark, which covers a wide range of goods and services, was registered in December 2014 and the figurative mark, covering goods and services in classes 29, 30 and 35, in September 2014.
Iceland (the country) filed requests for declarations of invalidity against both registrations via Íslandsstofa (Promote Iceland) and The Icelandic Ministry for Foreign Affairs. The Cancellation Division found both marks invalid, and Iceland (the supermarket) appealed. The matter was referred to the Grand Board in January 2021, and parties including Fisheries Iceland and INTA filed observations in the cases.
Public interest
In its decision, the Grand Board noted the importance of public interest and public policy, stating:
“While there appears currently to be no normative prohibition in the EU on registration of country names as trade marks, it may nonetheless be open to question whether, irrespective of the goods or services at issue, it is in the public interest to allow monopolisation of the names of EU and EEA Member States … that are highly familiar geographical locations to the relevant European public.”
However, it added that case law does not support the presumption that country names automatically constitute indications designating the geographical origin of goods and services; all the relevant circumstances must be taken into account.
Having considered the specific goods and services at issue in these cases, the Board said it was “reasonable to assume that ‘ICELAND’ is, in the mind of the relevant class of persons, capable of designating the geographical origin of the goods, and the sign is liable to be used in future as an indication of the geographical origin of goods”. That made it “plausible, credible and reasonable” to consider the marks descriptive for all the goods and services concerned.
Its overall conclusion was that, even if countries names can – and do – function as trade marks, “the matter has to be approached with caution”. Geographical marks including the name of a country may be perceived differently from other geographical indications, as customers are in the habit of making assumptions about products based on their national provenance. The Grand Board added:
“This is especially the case of the names of the countries of the European Union or European Economic Area, with which the relevant EU public is more familiar and which are in closer geographic proximity to them and are therefore more likely to be perceived as embodying certain favourable characteristics that influence acquisition of goods or services. Conversely, country names that originate from further afield and with which that public is less familiar may therefore be less problematic.”
It therefore confirmed the findings of the Cancellation Division that the marks were contrary to Article 7(c) EUTMR.
Acquired distinctiveness
The trade mark holder also argued that the marks had acquired distinctive character through use, and filed evidence in support of this argument.
However, the Grand Board noted that while there was evidence from the UK and Ireland, there was no evidence from Malta, Cyprus, Sweden, Denmark, the Netherlands or Finland – all territories where ‘Iceland’ would be understood in a descriptive sense. Referring to the Kit Kat decision of the CJEU, it added that, while evidence does not need to be submitted for each individual Member State, it must be capable of establishing acquired distinctiveness throughout those Member States. In this case:
“the EUTM proprietor has not convincingly claimed, or, more importantly, filed any evidence to support the view that the high level of recognition of its trade mark among the relevant public in the United Kingdom and Ireland should or could be extrapolated to the remaining relevant territories.”
Where next for country names?
These cases have already attracted much interest, and will likely be analysed further as they are digested. The decision will no doubt be of particular interest to brands that refer directly to countries (such as Jamaica ginger cake or Aussie shampoo).
The decisions indicate that, when it comes to EU trade marks, country names will only be registrable when consumers are not likely to associate them with characteristics of the relevant goods or services – so it will be down to applicants/registrants to present evidence demonstrating that in each particular case.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com