NEW YORK - The International Trademark Association (INTA) has filed statements of intervention before the General Court of the European Union (GCEU) in Iceland Foods Limited (IFL) v. European Union Intellectual Property Office (EUIPO) (Cases T-105/23 and T-106/23), concerning the registrability of country names as EU trademarks. This follows the GCEU granting INTA permission to intervene in the relevant cases, a press release stated by INTA.

The actions involve two EU trademark registrations: No. 2673374 ICELAND (word mark) and No. 011565736 Iceland logo   (figurative). These trademarks were registered in the EU by Iceland Foods Limited (IFL), a British supermarket chain, with respect to a range of goods and services in classes 7, 11, 16, 29, 30, 31, 32, and 35 (ICELAND trademarks). In 2016, Íslandsstofa (Promote Iceland), the Icelandic Ministry for Foreign Affairs and SA—Business Iceland filed a cancellation action against EUTM 2673374 on the grounds of Article 7(1)(b), (c), and (g) of the European Union Trademark Regulation (EUTMR). In 2018, Icelandic Trademark Holding ehf. filed a cancellation action against EUTM 011565736  Iceland logo on the same grounds. In 2019, the EUIPO Cancellation Division upheld both cancellation actions on the grounds of Article 7(1)(c) of the EUTMR. On July 28 of this year, the GCEU granted INTA permission to intervene in the relevant cases on the basis of having established an interest in their outcome.

After IFL appealed the decision in both cancellation actions, the EUIPO Board of Appeals (First Board) referred both cases to the EUIPO Grand Board of Appeal (GBoA). In 2021, INTA filed Third Party Observations in the proceedings before the GBoA regarding the ICELAND trademarks, in which INTA shared the Association’s expertise and observations on the issue of assessment of descriptiveness and distinctiveness of geographical names such as country names. On December 15, 2022, the GBoA dismissed the appeals and upheld the cancellation actions on the grounds of Article 7(1)(c) EUTMR, but also considered the contested EUTM registration non-distinctive on the grounds of Article 7(1)(b) EUTMR. By its appeals before the GCEU, IFL seeks to have the GCEU annul the GBoA decisions.

As mentioned above, INTA had already submitted Third Party Observations in the proceedings before the GBoA. After IFL filed its appeals against the GBoA decisions, INTA decided to intervene in the proceedings before the GCEU on the basis of Article 40 of Statute of the Court of Justice of the EU allowing third parties, which can establish an interest in the result of a case submitted to the court, to intervene in appeal proceedings. On June 8, 2023, INTA filed applications to intervene in Cases T-105/23 and T-106/23. By orders of July 28, 2023, the GCEU granted both applications, authorizing INTA’s intervention on the basis that it had established an interest in the result of the case.

In its statements of intervention INTA argued that state names should not per se be excluded from trademark registration and, as with all other geographical names, state names should not per se be considered descriptive of geographic origin, quality, or other characteristics of goods/services. INTA further argued that a trademark application that includes a state name, whether it is descriptive and/or non-distinctive with respect to specific goods or services, should be decided on a case-by-case basis and in accordance with the existing case law by assessing whether a specific state name (or another geographical name) is currently known, famous for, or associated in the mind of the relevant class of persons with the category of goods or services concerned, or whether it is reasonable to assume that it may be associated in the future with such goods and/or services.

INTA concluded that it is the actual/possible association between the geographical name and the specific goods/services that would make the name descriptive or non-distinctive and prohibit its registration as a trademark, not merely a general knowledge among consumers that a geographical area exists.

INTA has underlined in its interventions that an outcome in the present cases could change the status quo that has existed on this issue in the EU trademark system for nearly 25 years, and that this might have a disruptive effect on any potential sector/industry. The EUTM register and the national trademark registers of EU member states contain thousands of trademarks consisting of or including state names, or their adjectival forms. The validity of all or a part of those marks and their enforcement vis-à-vis third parties, as well as of all marks consisting of or containing other geographical terms, might therefore be adversely affected, as well as that of future applications, if the contested decision is upheld. In view of this, INTA requested, in support of IFL’s appeal, that the GBoA decisions be annulled.