Can mum still go to Iceland now that EUIPO has ruled mark invalid?

United Kingdom
  • The EUIPO Cancellation Division has upheld a declaration for invalidity filed against Iceland Foods’ EU registration for ICELAND
  • The claim was filed by several entities associated with Iceland the country and argued that the mark could cause confusion as to the geographical origin of goods and services
  • The decision might have gone differently if Iceland Foods had provided more evidence to better support its claim of acquired distinctiveness

 

The EUIPO Cancellation Division has recently upheld a declaration for invalidity filed against Iceland Foods Limited’s EU trademark registration for ICELAND (EU trademark registration 002673374 in Classes 7, 11, 16, 29, 30, 31, 32 and 35). The ICELAND mark was declared invalid in its entirety.

The invalidity claim was brought in November 2016 by a number of entities associated with Iceland (the country) against Iceland (the supermarket, referred to as the proprietor), including Islandsstofa (Promote Iceland) and the Icelandic Ministry for Foreign Affairs.

The claim was based on several grounds, including:

  • The ICELAND mark cannot function as a trademark for the goods and services at issue since it simply describes their geographical origin and their quality (claims based on the infringement of Article 52(1) of the EU Trademark Regulation in conjunction with Article 7(1)(c));
  • The ICELAND mark when used in relation to the goods and services at issue is likely to deceive the general public with regard to the geographical origin of the goods and services, since the owner of the ICELAND mark is from the United Kingdom and not Iceland (claims based on the infringement of Article 52(1) of the EU Trademark Regulation in conjunction with Article 7(1)(g)).
  • Previous oppositions brought by the proprietor against EU trademark applications containing the word “Iceland” (where the applicants are from Iceland and are using the term to designate a geographical indication) is evidence of the proprietor’s intention to “hinder Icelandic entities in trade, and attempt to stop them from referring to their geographical origin, and their home country in relation to their trade marks” (claims relating to breach of Article 14 (formerly 12) of the EU Trademark Regulation).

Evidence filed in support of the claim included detailed descriptions of the things that Iceland (the country) is well known for: its unique geography, geothermal energy, literature and food.   Survey evidence and details of various international tourism and travel awards won by Iceland provided context and support for the claims made.

In response, the proprietor sought to defend the invalidity action by setting out the background to the ICELAND mark, explaining that the well-known supermarket chain was established in 1970 and is one of the largest supermarkets in the United Kingdom with a high turnover in the last financial year. Interestingly, Icelandic companies and the Icelandic government part-owned Iceland Foods Limited for the period 2005 to 2012 and did not object to the ICELAND mark at that time. It also filed a number of arguments relating to case law on geographical names and argued that it was unlikely that consumers would misunderstand the ICELAND mark as referring to the origin of the goods and services.

Further, the proprietor claimed that it had in any event acquired distinctiveness for the ICELAND mark as a result of the use that has been made of it over almost 50 years.

The Cancellation Division, having reviewed the extensive evidence filed by both sides, moved first to define the ‘relevant public’. It determined that the word “Iceland” will be understood by native English-speaking part of the public in the United Kingdom, Ireland and Malta, together with the public in Sweden, Denmark, the Netherlands and Finland.

As a general point, the Cancellation Division held that it is in the public interest that signs that may serve to designate the geographical origin of goods or services remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also influence consumer preferences. 

Weighing up whether the geographic term ‘Iceland’ was, or could have been, perceived at the filing date of the ICELAND mark (April 2002) as a descriptive indication of the geographical origin of the goods and services concerned involved looking at the type of goods and services actually produced and supplied in Iceland (the country). The Cancellation Division held that the goods and services were of such a nature that the relevant public may view the term ‘Iceland’ as designating an essential and desired characteristic, such that the ICELAND mark was held to convey obvious and direct information regarding the geographical origin of the goods and services, and – in some cases – the subject matter of the goods as well. 

The ICELAND mark therefore fell within the scope of the prohibition of Article 7(1)(c) of the EU Trademark Regulation at the relevant date and was prima facie invalid.

The Cancellation Division then had to consider whether the proprietor had sufficiently demonstrated that, nevertheless, the ICELAND mark had acquired distinctive character at the relevant date such that the relevant public would associate it with goods and services originating from the proprietor. Although the proprietor had filed extensive evidence demonstrating sufficient levels of acquired distinctiveness in the United Kingdom and Ireland, it had no presence on the market in Sweden, Denmark, the Netherlands and Finland and was therefore unable to provide evidence of acquired distinctiveness in the market place.

In light of this, the Cancellation Division held that the application was successful in its entirety and the ICELAND mark was declared invalid for all the contested goods and services.

This decision highlights the importance of evidence in such cases – had sufficient evidence covering all of the relevant territories been provided, the decision might have been quite different for Iceland Foods Limited as it would have been better able to support its claim of acquired distinctiveness. It also reinforces the belief that the threshold to prove acquired distinctive character remains high. We will monitor this case to see whether Iceland Foods will appeal and, if so, what additional evidence it seeks to submit to overcome the decision.

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