11 January 2023

Some might say that this was a victory for common sense, but it’s a decision that should be a wake-up call to all brand owners whose trade marks contain a place-name.

On 15 December 2022 the EUIPO Grand Board of Appeal confirmed that the EU trade marks for ICELAND supermarkets had been registered contrary to Article 7(1)(c) of the EU Trade Mark Regulation (2017/1001), which prohibits the registration of marks that display simply the geographical origin of the goods or services.

The ICELAND supermarket trade marks were adjudged merely “descriptive” of all the goods and services for which they had been registered, meaning that the public might believe, wrongly, that those goods and services came from the country Iceland. The perception was based on the country’s ability to produce a wide range of goods and services.

The decision considered the public interest underlying Article 7(1)(c), the high familiarity of the relevant public with the country, its beneficial characteristics (eco-friendly, sustainable and prosperous) and the link between the name and the registered goods and services (which could have been for sustainable and eco-friendly goods).

In the Iceland case, a key fact was that the country projected a positive quality and character on which the supermarket might have understandably wished to piggy-back. It is also a one-word brand, which might have increased the possibility of public confusion.

It is highly likely that the appeal court started its hearing with a strong wish to find for the country of Iceland and against the supermarket chain, since the supermarket’s trade mark registration has for a long time snookered any attempt by the country to register trade marks of its own. The only reason for the shop’s power of veto was that it had got in first, and it seemed until this decision that the retailer might have been able to prevent applications by an entire country. The EUIPO was very motivated to bring that situation to an end.

Not all trade marks with a place-name will fall on the wrong side of this exclusion. An assessment of any trade mark is likely to depend on the specific facts of each case. It is though much better to have a highly individualistic and ideally invented name – such as Lego – than a descriptive name – such as Salisbury Fork Lift Hire. For more information contact Brian Levine Head of Media, Entertainment and Intellectual Property email 01935 846258.