Geographical Trade Marks on Thin Ice(land) in the EU

• The decisions uphold the invalidation of the supermarket's EU word and logo trade mark registrations containing the word "ICELAND".
• The judgments, centred on the relationship between the trade marks and the goods and services covered by the registrations, confirmed that ICELAND is too descriptive to function as a trade mark as the relevant public would associate it with the geographical origin or characteristics of the goods and services.

Background

Iceland Foods Ltd, a British supermarket chain, registered the following EUTMs:  

• ICELAND (EUTM No. 002673374) in Classes 7, 11, 16, 29, 30, 31, 32 and 35, filed on 19 April 2002; and
•  (EUTM No. 011565736) in Classes 29, 30 and 35, filed on 12 February 2013.

The Icelandic Ministry for Foreign Affairs successfully invalidated the registrations before the EUIPO's Cancellation Division on the grounds that marks would be perceived by the relevant public, as an indication that the goods and services came from Iceland. Following appeals by the supermarket, the Grand Board of Appeal upheld the decisions. Iceland Foods further appealed the decisions to the General Court, alleging incorrect application of Articles 7(1)(c) (marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service) and 7(1)(b) (marks which are devoid of any distinctive character) EUTMR.

The General Court's Decision

Article 7(1)(c) EUTMR

In assessing the relationship between ICELAND and the goods in Classes 29, 30, 31, and 32, which broadly cover foodstuffs, beverages, and agricultural products, the Court focused on Iceland’s present or prospective capacity to produce and export such goods. It noted that Iceland produces and exports various types of agricultural products and foodstuffs as well as its capacity for future food production. The Court found that goods not naturally grown in Iceland, such as cocoa, coffee, and tea could be processed locally and adapted to Icelandic preferences. As a result, the relevant public would likely perceive these goods as originating from Iceland.

The Court also upheld the Grand Board of Appeal’s findings in relation to Classes 7 and 11, which broadly include household appliances such as dishwashers, refrigerators and cookers, and class 16 which covers printed matter, publications, and stationery. The Court cited Iceland’s reputation for sustainability, green energy, and innovation, as well as its stable economy and skilled workforce, in supporting the argument that such products could originate from Iceland.  The Court also noted that the goods "printed matter, periodical publications and stationery" could still concern Iceland regardless of where they originate.

The Court applied a similar approach with respect to Class 35, which broadly covers retail services of food products, beverages and household goods, all of which, the Court noted, are capable of being produced in Iceland. It also held that retail services under the mark ICELAND would be perceived as being provided in stores located in that country.

Article 7(1)(b) EUTMR

As the Court upheld the invalidity of the mark under Article 7(1)(c), it dismissed Iceland Foods’ second plea under Article 7(1)(b) without examination. The Grand Board of Appeal similarly did not address this ground, however, it did note that if the mark were to be examined in light of Article 7(1)(b), it would have to be found to be devoid of distinctive character.

Comment

The cases are potentially important in the development of EU trade mark law regarding geographical names. The General Court applied a broad approach in its assessment of the relationship between the marks and the goods and services. It held that even the possibility that certain goods or services could originate from Iceland or be processed there and adapted to the local taste, was sufficient to establish a link between the goods and services and Iceland. This reasoning could, in theory, apply to almost any goods or services. The Court also placed considerable weight on Iceland’s strong reputation for environmental sustainability.

As a result of these decisions, businesses may face significant difficulties registering trade marks for or containing geographical names. Existing registrations could also be vulnerable to invalidation, regardless of how long they have been on the register. Brand owners should exercise particular caution when seeking to register or rely on marks containing geographical terms.

While the decisions are undoubtedly a huge win for the Icelandic government in its effort to protect the country's identity, the dispute may continue as the decisions can be appealed to the Court of Justice.

A version of this article was first published in WTR Daily, part of World Trademark Review, in August 2025. For further information, please go to www.worldtrademarkreview.com