Supermarket Chain Loses Trademark Battle Over ‘Iceland’ Name

Supermarket Chain Loses Trademark Battle Over ‘Iceland’ Name

Introduction

UK supermarket chain Iceland Foods has lost its appeal against an EU Intellectual Property Office (EUIPO) decision that prevented it from trademarking the word ‘Iceland’. The EU General Court upheld the EUIPO’s Grand Board of Appeal’s decisions to cancel the Iceland figurative and word trademarks filed by the supermarket chain.

Factual Background

The case dates back to 2016, when Íslandsstofa (Promote Iceland) asked for the word and figurative marks ‘Iceland’ to be declared invalid in relation to goods and services such as household appliances, food, beverages, paper goods and retail services. The Icelandic government argued that the trademarks hindered its businesses in marketing their own goods and services.

Contentions of the Parties

Icelandic Government's Contentions:

• The trademarks were descriptive and hindered the government’s businesses in marketing their own goods and services.
• Geographical names must remain available for public use to indicate the origin, quality, or characteristics of goods and may influence consumer tastes by associating goods with a place that creates a favourable impression.

Iceland Foods' Contentions:

• The decision effectively imposed a prohibition on using country names as trademarks, despite no EU legislation to that effect.
• The supermarket chain argued that the marks were not descriptive and should be allowed to remain registered.
• Iceland Foods was supported by the International Trademark Association (INTA), which backed its appeal.

Issues

The primary issue was whether the Iceland trademarks were descriptive and whether geographical names that refer to well-known places closely linked to the type of goods/services should remain free for public use.

Reasoning & Analysis

The EU General Court upheld the Grand Board of Appeal’s decision, stating that geographical names must remain available for public use. The Court emphasized that registering geographical names as trademarks would be impermissible where they refer to well-known places closely linked to the type of goods and services being offered. Evidence showed that the country of Iceland produces a wide range of goods and services in the relevant trademark classes — even coffee in Class 30 — which supported the finding of descriptiveness.

The Court noted that even if some goods are not directly produced in Iceland, they can be processed or adapted to local tastes, reinforcing the link to the geographic name. The ruling also highlighted that this case was significant because it marked the first and, to date, only oral hearing held by the EUIPO’s Grand Board of Appeal.

Implications

This decision reinforces the importance of keeping geographical terms accessible and highlights the balance between trademark protection and public interest. According to experts, this could result in brand owners taking a more restrictive approach to naming and marketing strategies and opens the door for more invalidation actions against EU trademarks containing geographic elements. Brand owners will need to be more cautious when choosing brand names or logos for the EU market.

Outcome

The EU General Court dismissed Iceland Foods’ appeal, and the supermarket chain was unable to trademark the word ‘Iceland’ or the figurative mark. The decision opens the door for invalidation actions to be filed for EU trademarks containing geographical locations.