Iceland Foods Loses Latest Round In Its Ongoing Trademark Battle With The Country Iceland

• Jurisdiction: European Union
• Law Firm: Ganado Advocates
• Subject Matter: Intellectual Property, Trademark
• Author: Sasha Muscat
• Published date: 20 January 2023

In two separate decisions of the 15 December 2022, Iceland Foods Ltd v Íslandsstofa (Promote Iceland) and others (Case R 1238/2019-G) and Iceland Foods Ltd v Icelandic Trademark Holding ehf (Case R 1613/2019-G), the European Union Intellectual Property Office (the 'EUIPO') Grand Board of Appeal confirmed that the EU word mark ICELAND and the EU figurative mark incorporating the text 'Iceland' had been registered contrary to Article 7(1)(c) of the EU Trademark Regulation (Regulation No. 2017/1001) (the 'EUTMR'). Article 7(1)(c) prohibits the registration of trademarks that consist exclusively of signs or indications which, in trade, serve to designate, inter alia, the geographical origin of the goods or services for which registration is sought. The trademarks, both of which were registered in the name of the UK supermarket chain 'Iceland Foods Ltd.', have consequently been cancelled from the EU Trademark Register.

Background of the Cases - The EUIPO Cancellation Division's Decision

In 2016, several entities associated with Iceland (the country), including the Icelandic Ministry of Foreign Affairs, brought forward a claim to invalidate the following trademarks that had been registered since 2014 by Iceland Foods (the UK supermarket chain), arguing it impacted the ability of Icelandic businesses to refer to their place of origin when marketing their own goods and services:

• A EU word mark for ICELAND, registered in 2014 in classes 7 11, 16, 29, 30, 31, 32, and 35; and
• A EU figurative mark incorporating the text ICELAND, also registered in 2014 and in classes 29, 30 and 35.

The EUIPO's Cancellation Division declared both trademarks invalid in 2019, on the basis that they were descriptive of the geographical origin of the goods and services covered by the registrations in terms of Article 7(1)(c) of the EUTMR. Iceland Foods subsequently appealed, arguing that it was unlikely that consumers would misunderstand the term 'ICELAND' as referring to the origin of the goods and services sold by them under those trademarks, and that the name had acquired distinctiveness through almost fifty years of use. Consequently, the First Board referred the case to the Grand Board of Appeal for its decision.

The EUIPO Grand Board of Appeal Decisions

In two separate decisions of the 15 December 2022, the Grand Board dismissed Iceland Food's appeals and confirmed the earlier findings of the Cancellation Division that the marks had been registered contrary to Article 7(1)(c) of...