A tale of two Icelands

On Friday 9th September 2022, the Grand Board of Appeal of the European Union Intellectual Property Office (‘EUIPO’) held its first ever oral hearing.

The Hearing which was live streamed concerned an Application for Invalidity by Icelandic Ministry for Foreign Affairs against two European Union trade mark registrations for the word ICELAND and stylised word mark ICELAND:

in the name of British supermarket chain Iceland Foods Limited. Although the decision was reserved and is unlikely to be forthcoming for months, the case and indeed the hearing raised a series of interesting questions over the registration of geographical terms, and in particular the names of countries.

A bit of ‘Icelandic’ history

Iceland was first settled by Norse settlers in 874. Its name seemingly less of a marketing gimmick than Greenland which allegedly was a name devised by Icelander ‘Erik the Red’ to encourage settlement further west and north of Iceland. Iceland Foods was formed much later in 1970 and is most well known as a retailer of frozen foods, although its product range has broadened significantly over the years and the registrations at issue covered a broad range of goods in Classes 7, 11, 16, 29 , 30, 31 32 and retailing in Class 35.

The Icelandic Ministry for Foreign Affairs on behalf of the Icelandic government and arguably indeed the Icelandic nation argued that the two registrations at issue should not have been granted on the basis of them being non-distinctive and descriptive due to the fact that the dominant element of both trade marks is the word ‘Iceland’. The registrations were filed back in 2002 and 2013 respectively and were originally opposed by various Icelandic businesses, but the oppositions were ultimately withdrawn and the registrations granted. The Icelandic Ministry for Foreign Affairs subsequently filed invalidity actions against the registrations and were ultimately successful before the Cancellation Division of the EUIPO in 2019.

Those decisions were appealed and referred to the Grand Board of Appeal given their importance. At the oral hearing, the Icelandic Ministry for Foreign Affairs attempted to introduce a new ground of invalidity on the basis of public policy, the admittance of which the Board will have to decide in addition to the grounds already raised.

What issues did the Hearing centre on?

The oral hearing lasting hours ranged over a wide range of arguments and issues, with expert witnesses providing oral testimony and the members of the Grand Board of Appeal raising a series of questions to the Appellant and Applicant for Invalidity. However, in essence the thrust of the Hearing was whether the name of a country should never be registered as a trade mark and is essentially a ‘special case’ in the consideration of trade marks consisting of geographic terms.

The Icelandic Ministry for Foreign Affairs understandably emotively argued that the name of the their nation should not form the subject of a trade mark registration as this would impinge the ability of Icelandic companies to market their products and services. Further, arguing that although Iceland maybe a small country, it should be treated no differently than larger countries such as France or Germany. Further, it argued that the word ICELAND acts as a national brand which is of great value to the Icelandic nation and businesses.

The argument over whether the geographic significance of a word can impact the question of whether it can be registered as trade mark centred to a large degree at the Hearing on whether the Icelandic nation does, could or would be reasonably known in the European Union for producing, selling and exporting the goods and services at issue.

Why are these questions important? Well as the representative for Iceland Foods Limited argued possibility the key case concerning the registration of geographic terms in the EU is the well-known Windsurfing Chiemsee case which did not prohibit the registration of trade marks simply because they consist of geographic terms. The key findings of that case was whether the term was reasonably known for the production of the goods at question or could be known in the future. If the answer to those questions was yes, then registration should be prohibited, if no then registration should be granted.

Iceland Foods representative argued that the names of countries should be treated no differently to smaller geographic locations such as cities and indeed he pointed out that geographic terms such as LIVERPOOL which has a population larger than Iceland have been registered as trade marks. The argument over whether there should a strict prohibition on the registration of country names was essentially a political argument and not a legal argument which should be considered here by the Grand Board of Appeal.

So what is Iceland known for under the principles laid down by the Windsurfing Chiemsee case? Well Iceland Foods representative understandly argued that the range of products it was known for in the EU was relatively narrow, and although accepting that Iceland was a very beautiful country which he wanted to visit, was only known for fish and seafood which do not form the subject of the registrations. The Icelandic Ministry for Foreign Affairs seemed slightly insulted by such an assertion at the Hearing arguing that essentially any product is and could be produced in Iceland. At one point there was a surreal argument over whether bananas could be grown in Iceland, the Icelandic Ministry for Foreign Affairs arguing they are indeed grown in Iceland and the representative of Iceland Foods arguing that they are grown by students in greenhouses for their own consumption, pointing out that the trade mark ALASKA is registered for water in the EU in support of their position.

So how is the case likely to be decided?

The cases do deal with a very tricky question of the registration of geographic terms. Iceland Foods has traded very successfully in the United Kingdom and indeed beyond for over fifty years. Would consumers think that they are associated with the country, probably not, and I think they would not be associated in the minds of UK purchasers at least. As a result of this question, should they be able to register such a brand name, arguably yes.

However, that is not the question. The problem is the registration of geographic terms can potentially impact of others using descriptive and non-distinctive terms. Yes such traders do have a defence to trade mark infringement claims if the term is wholly descriptive, but why should they look over their shoulders in the words of some very old cases on this subject in the UK? The Windsurfing Chiemsee case only lays down broad principles on the subject.

Where should the line be drawn? At one stage the UKIPO dealt with this question with fairly arbitrary population figure prohibitions. That practice was slowly abandoned over time, with the Windsurfing Chiemsee dealing such an ‘absolute practice’ redundant.

Life was so much simpler in 874 and the time of ‘Eric the Red’ and maybe this case will determine the tricky question of where the line must be drawn in the registration of geographic terms.

This article was prepared by HGF Partner & Trade Mark Attorney Lee Curtis.