The Grand Board of Appeal of the European Union Intellectual Property Office ('EUIPO') held its first oral hearing on Friday, September 9, 2022.
The live-streamed hearing concerned an application for invalidity filed by the Icelandic Ministry of Foreign Affairs against two European Union trade mark registrations for the phrase ICELAND and the stylized word mark ICELAND:
Iceland Foods Limited is the name of the British grocery chain. Although the verdict was reserved and is unlikely to be issued for months, the case and the hearing presented a number of intriguing considerations about the registration of geographical words, particularly country names.
Iceland was colonised for the first time by Norse settlers in 874. Iceland Foods was founded in 1970 and is best known as a frozen food shop, while its product line has expanded greatly over the years, and the registrations at issue covered a wide range of items in Classes 7, 11, 16, 29, 30, 31, 32, and retailing in Class 35.
The Icelandic Ministry of Foreign Affairs argued, on behalf of the Icelandic government and, arguably, the Icelandic nation, that the two registrations at issue should not have been granted because they are non-distinctive and descriptive as the dominant element of both trade marks is the word 'Iceland.'
The registrations were filed in 2002 and 2013, respectively, and were first contested by a number of Icelandic businesses; nevertheless, the oppositions were eventually withdrawn, and the registrations were allowed. The Icelandic Ministry of Foreign Affairs then filed invalidity procedures against the registrations, which were ultimately successful before the EUIPO's Cancellation Division in 2019.
Given the gravity of the decisions, they were appealed and referred to the Grand Board of Appeal. The Icelandic Ministry of Foreign Affairs attempted to introduce a new ground of invalidity based on public policy during the oral hearing, the acceptance of which the Board will have to consider in addition to the grounds already stated.
The hours-long oral hearing included a wide range of arguments and concerns, with expert witnesses delivering oral testimony and members of the Grand Board of Appeal asking the Appellant and Applicant for Invalidity a series of questions. However, the main point of the Hearing was whether the name of a country should never be registered as a trade mark, and this is effectively a'special circumstance' in the context of trade marks containing geographic elements.
The Icelandic Ministry of Foreign Affairs sensibly claimed that the name of their country should not be the subject of a trade mark registration since it would limit Icelandic enterprises' capacity to sell their products and services.
Furthermore, asserting that, despite its tiny size, Iceland should be regarded the same as larger countries such as France or Germany. Furthermore, it contended that the phrase ICELAND serves as a national brand that is extremely valuable to the Icelandic people and enterprises.
The debate over whether the geographical significance of a word can influence whether it can be registered as a trade mark was largely focused on the Hearing on whether the Icelandic nation is, could, or would be reasonably known in the European Union for producing, selling, and exporting the goods and services at issue.
What is the significance of these questions? As the lawyer for Iceland Foods Limited noted, the fundamental precedent in the EU addressing the registration of geographic terms is the well-known Windsurfing Chiemsee case, which did not prohibit the registration of trade marks simply because they contained geographic elements. The crucial conclusions in that case were whether the term was fairly known for the manufacturing of the goods in question, or whether it could be known in the future. If the answers to those questions were yes, registration should be forbidden; if the answers were no, registration should be permitted.
The representative of Iceland Foods stated that country names should be considered the same as smaller geographic areas such as cities, and he pointed out that geographic words such as LIVERPOOL, which has a population larger than Iceland, have been registered as trade marks. The debate over whether there should be a severe limitation on the registration of nation names was basically a political one, not a legal one, which the Grand Board of Appeal should consider here.
So, according to the principles established by the Windsurfing Chiemsee case, what is Iceland known for?
Well, the Iceland Foods representative understandably argued that the range of products it was known for in the EU was relatively narrow, and that, while acknowledging that Iceland was a very beautiful country that he wanted to visit, it was only known for fish and seafood, which were not the subject of the registrations. At the Hearing, the Icelandic Ministry of Foreign Affairs appeared mildly offended by such a claim, arguing that virtually any product is and could be made in Iceland.
At one point, there was a bizarre debate over whether bananas could be grown in Iceland, with the Icelandic Ministry of Foreign Affairs claiming they are, and the representative of Iceland Foods claiming they are grown in greenhouses by students for their own consumption, citing the fact that the trade mark ALASKA is registered for water in the EU to support their position.
The cases do deal with the difficult issue of geographical term registration. For nearly fifty years, Iceland Foods has traded effectively in the United Kingdom and beyond.
Would consumers associate them with the country? Probably not, and I doubt they would be associated in the minds of UK purchasers. As a consequence of this query, they may be able to register such a brand name.
That, however, is not the question. The issue is that registering geographic phrases may have an influence on those who use descriptive and non-distinctive terms. Yes, such traders have a defence to trade mark infringement allegations if the phrase is entirely descriptive, but why should they, in the words of some very ancient UK judgements on the subject? The Windsurfing Chiemsee case merely establishes basic ideas.
Where should the dividing line be drawn? At one point, the UKIPO addressed this issue with very arbitrary population figure prohibitions. That technique was gradually abandoned over time, rendering the Windsurfing Chiemsee dealing with such a 'absolute practise' obsolete.