No Christmas (trade mark) cheer for Iceland Foods at Grand Board of Appeal

23rd December 2022

The EUIPO Grand Board of Appeal released its decisions in the high-profile battle over two ICELAND trade marks. The UK supermarket, Iceland Foods Ltd, lost its fight to stop its two EU marks from being knocked off the register, following successful cancellation actions by the country of Iceland.

What were the trade marks?

The dispute was over two EU trade marks (EUTMs) owned by the UK supermarket giant, Iceland Foods Ltd:

1. A word mark for ICELAND registered in 2014. This was registered in classes 7, 11, 16, 29, 30, 31, 32,and 35.
2. A figurative mark containing the word ICELAND also registered in 2014 (as shown below). This was registered in classes 29, 30 and 35.

Cancellation actions

The Icelandic Ministry of Foreign Affairs and related parties applied to cancel the two EUTMs. In 2019, the EUIPO’s Cancellation Division invalidated the two marks on the basis that they were descriptive of the geographical origin of the goods and services covered by the registrations (Article 7(c) EUTM Regulation).

Hitting the headlines

The “Iceland” dispute has attracted considerable interest because it is one of the few times that EUIPO Board of Appeal cases have involved an oral hearing. (The hearing took place this autumn).

In addition there are significant points of principle regarding the registration of geographical terms which the First Board of Appeal considered sufficiently important to refer to the Grand Board of Appeal.

Grand Board of Appeal rulings

On 15 December 2022, the Grand Board of Appeal published its judgments with very similar reasoning. (R 1238/2019-G and R 1613/2019-G relating to the word and figurative EUTMs, respectively).

The Grand Board of Appeal decided that the term ICELAND would be perceived as referring to a country in at least the UK (a relevant jurisdiction because it was part of the EU at the filing date in 2002), Ireland, Sweden, Denmark, and Finland. It held that country names should be looked at differently to other geographical terms when assessing whether they were likely to be perceived as descriptive of the geographical origin of the relevant goods and services. It also considered that the socio-economic links, proximity to the EU and positive connotations associated with the country, were also relevant factors. It also reviewed previous cases relating to the registration of country names such as those relating to ALASKA and GREENLAND.

The Grand Board of Appeal also considered issues relating to the public interest underlying the application of Article 7(1)( c), the relevant date for assessment, and the admission of late evidence.

Acquired distinctiveness?

Iceland Foods had sought to overcome the descriptive nature of the term by filing survey and expert evidence which supported its argument that the term had acquired distinctive character through use. However, the Grand Board of Appeal rejected this argument as no evidence showing the term had acquired distinctive character in Sweden, Denmark, Netherlands, and Finland had been filed. These were countries in which the term ICELAND would be understood as descriptive of geographical origin.

Result

Consequently, the Grand Board dismissed Iceland Food’s appeals and confirmed the findings of the Cancellation Division that the marks had been registered contrary to Article 7(1)(c).

Comment

The decision, which runs to over 60 pages, seeks to rationalise the case law on when a term is not registrable because of its geographical descriptive nature, and identify the factors and principles to be applied in such cases. This will provide some clarity in this area, although given the importance of the brand to Iceland Foods, it is possible that this is not the last we will hear of this dispute.

Peter Brownlow commented on this dispute for WIPR – click here to read it.