Can Iceland be owned?

On the 9th of September 2022 the EUIPO’s Grand Board held their first ever oral hearing in Appeal cases. The stakes of this case were the trademark ICELAND and the figurative trademark ,  both registered by the British supermarket chain Iceland (the Appellant) for various goods and services in various classes.  The Icelandic Ministry for Foreign Affairs (the Defendant) lodged an invalidity request against the trademarks on the basis of descriptiveness and non-distinctive nature.

Yours truly tuned in at 9.30 sharp, for a full five hours of IP entertainment.

The Icelandic Ministry for Foreign Affairs took us on a literary journey through the great landscapes of Iceland, with clear blue waters. She underlined the strong Viking spirit of the inhabitants and the amazing growth they made.

The Appellant had no mercy, with little subtlety he described Iceland as a tiny country, with the same population as Alicante and at its best known for aluminum and fish, nothing more.

Hearing her country being described as merely a fisherman’s village, we could clearly see the Viking spirit of the Defendant claiming that they even produce bananas in Iceland!

Why this discussion on the capacity of Iceland to grow bananas and the economic importance in general? To answer this question, we leave the beautiful blue waters of Iceland and go to the Chiemsee lake in Germany. This lake was the subject of a judgment of the General Court in 1997 where they answered the question if a geographic location could be descriptive of the origin of goods and services. This question was answered with even more questions, of which the relevant one here is ‘will the consumer link the geographic location with the goods and services?’. In this specific case, if you see a banana bearing the trademark , do you assume it’s a banana from Iceland or do you perceive it as just a trademark?

The Grand Board seems to believe in the Viking spirit and imagines the Icelanders to be capable of almost anything. In the decision they speak of the glaciers, volcanoes and rugged landscapes; moreover, they emphasize that Iceland is much more than these physical attractions. They underline the exceptionally high GDP and the fact that a wide range of goods and services are produced in Iceland.   Therefor they conclude that both trademarks registered by the British supermarket chain should indeed never have been accepted for registration as they are descriptive of the origin of the goods and services involved.

In my opinion this is quite a stretch of the Chiemsee requirements. When entering the supermarket ICELAND and throwing some eggs, milk, coffee and rice bearing a beautiful sticker  in my shopping cart, at no point I would be convinced that these purchases are actually from Iceland, nor would they instantly take me on a hike through the scenic valleys.  However, giving the monopoly of a country’s name to one company is not in the public interest and one has to wonder whether this was the actual reasoning of the Grand Board to fit their decision into the Chiemsee caselaw.

Note that state emblems, official signs and flags are protected and cannot be registered as a trademark, so why not protect a country’s name?

If you’re wondering if your trademark steps on the toes of a Viking or is descriptive, and therefor might be invalidated, do not hesitate to call upon our expertise.

© 2023, Hanne Lammens for IP Hills

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