The Court upheld the 2022 decision of the Grand Board of Appeal of the EUIPO (discussed by the IPKat here), finding that the ICELAND trade marks were invalid on the grounds of geographical descriptiveness (Case T‑105/23). While the decision contains no surprises [Merpel: or better yet, "snow surprises"], it provides a useful overview of the settled EU case law on geographically descriptive names and its specific application to country names.

Background

Iceland Foods Ltd is a supermarket chain, which was founded in 1970 and has its headquarters in Wales. It is one of the UK's major food retailers, with over 900 shops across the UK, and additional shops in Europe, especially Ireland. 

In 2002, the company applied to register the word mark "ICELAND" (EUTM No. 002673374) for a wide range of goods and services in classes 7, 11, 16, 29, 30, 31, 32 and 35. Then, in 2014, it sought to register a figurative mark comprising the stylised word "ICELAND" (EUTM No. 011565736, see image below) for goods and services in classes 29, 30 and 35. 

The supermarket provoked the ire of the Nordic country in 2015, when it opposed an EU trade mark application to register the mark INSPIRED BY ICELAND, which was filed by Íslandsstofa (Promote Iceland), an entity related to the Icelandic government (see Case T‑267/18). 

EU TM No. 011565736, the figurative mark

Íslandsstofa (Promote Iceland), the nation of Iceland, and SA – Business Iceland (a confederation of Icelandic enterprises) responded by seeking cancellation of the supermarket's word mark in 2016, and the figurative mark in 2018. The opposition focused on the ground for invalidity in Article 7(1)(c) EUTMR: that the signs were descriptive of the geographical origin of the goods and services. Both the EUIPO Cancellation Division and the Grand Board of Appeal accepted this argument.

Following the 2019 decision of the Cancellation Division, the Icelandic foreign minister, Guðlaugur Þór Þórðarson commented: "I celebrate this result, although it in no way comes as a surprise to me, as it goes against common sense that a foreign company could file exclusive rights on the name of a sovereign country." However, in their brief in support of Iceland Foods, the International Trademark Association (INTA) pushed back on this argument. They emphasised that the names of countries are not per se excluded from registration, and should not be treated any differently from other geographical names.

The General Court decision

The General Court, like the Grand Board of Appeal, drew upon settled case law, especially the factors from Windsurfing Chiemsee. 

Public interest

The Court reiterated that it's in the public interest for geographically descriptive names to remain freely available for use by all, "not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer tastes by, for instance, associating the goods with a place that may give rise to a favourable response."

Importantly for this case, the public interest applies to both geographical names that are already famous or known for the category of goods or services, as well as to geographical names that are liable to be used by undertakings and must remain available where "it is reasonable to assume that such an association may be established in the future."

Degree of familiarity with the name 

In assessing whether the geographical name is capable of designating the origin of the goods or services in the future, the Court first had regard to the degree of familiarity with the name amongst the relevant public. The Court emphasised that it's not enough for the relevant public to know of a geographical location, and contrary to the concerns raised by INTA and Iceland Foods, the Grand Board of Appeal had not treated the mere recognition of Iceland as a decisive factor. Rather, the Grand Board had found that the degree of familiarity of the geographical name Iceland was very high among the relevant public.

Characteristics of the Place

The next factor from Windsurfing Chiemsee was the degree of familiarity with the characteristics of the place designated by the name Iceland. The Court found no reason to dispute that Iceland was well-known as an environmentally friendly country, a popular tourist destination, and a country capable of producing many different types of goods and providing a wide range of services, and which maintained significant commercial relationships with the EEA countries.

Link with the categories of goods or services concerned

When considered the link between the place name Iceland and each of the categories of goods and services, the Court rejected the claim that it was necessary to assess the "reputation" which Iceland enjoyed among the relevant public, or which it was liable to enjoy in the future, in relation to the goods and services covered by the mark at issue. The Court was entitled to take account of various circumstances, which are not limited to the question of reputation.

Classes 29 to 32 (foodstuffs, beverages and agricultural products)

The Court held that it was correct to consider that there is a legal obligation to indicate the country of origin for certain goods, especially food products. Whilst Iceland is mainly known for fish, seafood, meat and dairy products, other food products (such as fruits, vegetables and herbs) could be produced in Iceland in greenhouses, heated with geothermal energy.

Iceland Foods argued that certain goods covered by Classes 29-32 were quite "exotic" (such as coffee or rice) and it was "purely theoretical" that they would be exported by Iceland. However, as affirmed in Windsurfing Chiemsee, "it is not necessary for the goods to be manufactured in the geographical location in order for them to be associated with it." The Court repeated the examples of tea selections from England or Ireland, where tea plants are not grown, but nevertheless can be processed and adapted to local tastes, which creates the perception of a link between those places and tea. The same might be true in the future in Iceland for the processing of goods like cocoa, coffee, tea, rice, sago and tapioca.

Classes 7 and 11 (domestic machines and apparatus for heating, refrigerating, etc)

The Court upheld the findings for these categories of goods. It repeated the Grand Board's point that such goods would benefit from the associations with Iceland's environmentally-friendly image and reputation for green energy and sustainability. While the evidence for the production of such goods in Iceland was limited, the skilled workforce, healthy and stable economy and encouragement of innovation and creativity by the Icelandic government suggested that it had the capacity to manufacture all of the goods in question, or could do in the foreseeable future.

Class 16 (paper, cardboard goods and stationery)

For these everyday objects, the Court upheld the finding that the relevant public perceived the mark at issue as an indication of the geographical origin of those goods, or their characteristics as environmentally friendly goods. For printed matter or periodical publications, the Court accepted that the relevant public might assume that they concerned the country of Iceland.

Class 35 (retail services in stores and online)

The Court held that the name Iceland could be perceived as a reference to a specific quality of the goods marketed by these services, or that Iceland may be the country of origin of the goods. The Court dismissed the arguments about the small population of Iceland and the lack of current exports of any such "services."

Final Thoughts

What began as a fun joke of a name for a grocery store specialising in frozen goods, probably seems a lot less funny for the supermarket chain now. But aside from prompting amusing headlines and providing some final comments to rebut INTA's arguments about the descriptive use defence, the General Court decision did not add much to the current state of EU trade mark law. 

Importantly, the Court was quick to rebuff any scaremongering that the decision automatically brings all country names within the scope of the ground for refusal in Article 7(1)(c) EUTMR. However, with the "prospective outlook" on associations that may reasonably be established in the future, the decision makes it clear that traders need to think more carefully about using country names as trade marks.

Source: https://ipkitten.blogspot.com/2025/07/country-of-iceland-successfully-freezes.html