Iceland. The country? (4)

We talked earlier about the trademark ICELAND from Iceland Foods. Can such a geographical indication be a trademark? No, according to the Icelandic government who filed a cancellation action against the European registration ICELAND from Iceland Foods. And now there is a decision in this interesting trademark case.

The position of the Icelandic government is clear: with a trademark registration, Iceland Foods can stop any trademark with Iceland in it. This while Iceland is a country that is also known for its food production (fish, beer, water etc.). For that reason, ICELAND is not a trademark, but it must be possible for anyone to freely use this sign. The Iceland Foods brand is therefore not distinctive and must be declared invalid. The Icelandic government further states that the the trademark of Iceland Foods is misleading (the products do not come from Iceland at all). Iceland Foods also acts contrary to the law by taking action against parties that use Iceland in a descriptive sense, while this is legally permitted.

Iceland Foods does not agree with this. ICELAND is the name of a well-known supermarket chain that has been around for more than 50 years. Iceland is also not that well known for its food production. And if ICELAND is considered to be a descriptive trademark, ICELAND acquired distinctiveness by its intensive use.

The EUIPO is considering the issue and argues that a geographical indication does not require that this name is already known as an indication of origin for the products in question. However, this is a relevant fact. In this case, the EUIPO agrees with Iceland Foods that the export of food is rather minimal. You cannot say that Iceland is known for this. What is particularly important in the question whether or not ICELAND is an indication that should be kept free from trademark protection is the public awareness of the name Iceland and the extent to which it is likely that Iceland can be associated (in the future) with food products. In short, the EUIPO concludes that Iceland is well-known and also plays an economic role. It is therefore likely that Iceland can be associated with the products in question.

So, EUIPO comes to the conclusion that ICELAND is a name that must be kept free from trademark protection. An exception to this is the acquired distinctiveness that also applies to geographical names, according to EUIPO. So, a geographical name may well have become a trademark. Having said this, the EUIPO does not find the evidence that Iceland Foods has submitted convincing. And so the saga comes to an end (for now) and the European trademark ICELAND is declared invalid.

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Arnaud Bos

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