Related PeopleCorinna Hiscox
CHILLING NEWS FOR ICELAND’S EU TRADE MARK
Frozen-food retailer, Iceland, must have been disappointed to receive the decision of the EUIPO, earlier this month, cancelling its EU trade mark registration for the word ICELAND.
The retailer has been a well-known feature of the UK’s high street for over 40 years, starting out in 1970 and now boasting more than 800 stores countrywide. Its mark was protected at EU-level back in 2014 for a range of foodstuffs, household goods and retail services, after a hard-fought twelve-year battle against multiple opponents.
The EUIPO’s decision now comes as a result of a post-registration challenge by the Icelandic government, which argued the country name should be kept free for use as geographic indication of origin. It complained the registration could prevent Icelandic businesses from referring to their home country as part of their trade marks, and could hinder legitimate descriptions of the origin of their products.
EU trade mark law specifically prohibits registration of trade marks consisting only of geographic indications, which could reasonably be seen by consumers as a reference to the origin of the products or services at issue.
Brands owners can get around this prohibition where the geographic name is not known to the public, or consumers would not expect the goods or services to originate from the geographic location at issue, when presented with the trade mark.
Geographic names already famous or known for the goods concerned will, however, be refused protection, unless an applicant can show the name in question has become distinctive of its products or services through use.
In this case, the EUIPO sided with Iceland (the country) for reasons of public policy: the name Iceland conveys relevant information about the goods and services covered by the registration, such as the place of production or processing.
Whilst the supermarket filed extensive evidence of its long history of use of ICELAND as a trade mark, the EUIPO found this only proved acquired distinctiveness in the UK and Ireland, not in the rest of the EU.
The retailer’s trading activities were therefore insufficient to justify EU-wide protection of the name, given that there are English-speaking consumers in other EU territories, who would understand ICELAND as referring to the country, not the supermarket.
The EUIPO singled out Denmark, Finland, Sweden, Malta, and the Netherlands, in particular, as EU-member states where English is well understood. To defeat the cancellation action, the supermarket would have needed to provide evidence of trading activities in those territories too.
Making out a case of acquired distinctiveness at EU-level is onerous, particularly for English-language marks, and applicants / registrants need to fully consider their position in all EU countries where grounds for objection apply.
Iceland (the supermarket) will be very disappointed to be frozen out of an EU-wide monopoly in its key word mark – it is no doubt considering filing an appeal. However, the decision seems a victory for common sense, given the range and breadth of goods and services covered by the registration and the public interest issues at stake. The supermarket may take some comfort in the fact that its UK registrations for ICELAND are still valid.