In a chilling ruling for Iceland Foods, the General Court has upheld a decision invalidating the “ICELAND” trade mark in the EU.
The GC held that the relevant public would perceive the mark “ICELAND” as indicating that all of Iceland Foods’ registered goods and services came from Iceland, and the mark was therefore descriptive of geographical origin in its entirety.
Remarkably, this conclusion even extended to goods like coffee, cocoa and rice. While the GC accepted that these products are incapable of being grown in Iceland, it concluded that they could feasibly be processed in Iceland or adapted to local taste, and would therefore “originate” from Iceland. This somewhat tenuous argument was supported by an example of tea selections being perceived as “originating” in the UK and Ireland, which conveniently forgets the centuries-old link resulting from British imperialism.
More generally, the GC relied on Iceland’s potential manufacturing capabilities as justification for invalidating Iceland Foods’ mark. It explained that, because of Iceland’s solid industrial base, skilled workforce and encouragement of creativity and innovation, the relevant public would perceive Iceland as capable of manufacturing goods registered in classes 7 and 11 (such as dishwashers and ovens). It therefore agreed with the Grand Board of Appeal (GBoA) that the “ICELAND” mark fell foul of the geographical origin objection for these goods. A similar broad-brush approach was taken for the class 35 services.
Overall, the decision will make it very difficult to register the name of a country as a trade mark in the EU for any goods and services. Provided it is plausible that the goods or services originated from that country, any registration will be susceptible to invalidation. A wider practical effect of the decision may be to invigorate smaller regions/territories looking to more forcefully prevent or invalidate registration of marks consisting of their territory’s name, even for unrelated goods and services. Businesses will now have a greater incentive to be wary of building a brand around a place name or territory.
Iceland Foods has one final appeal route, via the Court of Justice, failing which its mark will be iced out for good.
