General Court confirms cancellation of ‘Iceland’ trade marks

In cases T-105/23 and T-106/23, the General Court upheld the EUIPO Grand Board of Appeal’s decisions (Cases R 1238/2019-G and R 1613/2019-G) to cancel the word and figurative EU trade marks containing the term ‘Iceland’. These trade marks were registered for various products and services like household appliances, food, beverages, paper goods and retail services.

The Icelandic Ministry for Foreign Affairs challenged these trade marks, which were held by the British supermarket chain Iceland. The main issue was whether the word "Iceland" was too descriptive for these goods and services, which are categorised under Classes 7, 11, 16, 29, 30, 31, 32, and 35.

These cases are particularly significant as they mark a milestone in the history of the EUIPO Boards of Appeal. It was during these appeal proceedings that the Grand Board of Appeal conducted an oral hearing for the first time in its history.

In the recent judgments, the General Court reaffirmed that geographical names must remain available for public use, not only because they may indicate the origin, quality or characteristics of goods, but also because they can influence consumer tastes and shape perception.

These rulings reinforce the importance to keep geographical terms accessible and highlight the balance between trade mark protection and public interest.

Source: https://www.euipo.europa.eu/en/news/general-court-confirms-cancellation-of-iceland-trade-marks