Almost 25 years after the Chiemsee judgment, EUIPO now appears to be following a more restrictive application. For names of countries in and around the EU in any case, the decision means these names will in principle be regarded as descriptive for all possible goods and services. This is fully in line with the rationale behind the Chiemsee judgment, the most important European judgment regarding descriptive geographical names. However, the decision derogates from what was applied previously. What is this case about? What is going on here, and given the ICELAND decision by the GBoA, what has changed?
Background to the case
Since 1970, the British supermarket chain Iceland Foods Limited (hereinafter: IFL) has been successfully trading with the brand ICELAND. In 2002, IFL applied to register the word mark ICELAND with EUIPO. The application was refused for some of the goods, specifically fish, fish products and live animals, but was indeed registered for a wide range of goods in classes 7, 11, 16, 29, 30 and 31. Referring to the Oldenburger and Chiemsee judgments, ICELAND was found to be descriptive for fish but not for bread, beer, coffee, printed material, refrigerators or meat, for instance.
In 2016, the Icelandic government filed a cancellation request with EUIPO against the IFL word mark and the figurative mark that was applied for in 2013.
The Government of Iceland took a principled stand, stating in fact that the ‘goodwill’ of the country belongs to them and should not be allowed to be monopolised by a private party. Possibly the Icelandic government was also irritated by the fact that the supermarket chain invoked its trademarks against other (Icelandic) participants in the market using the term Iceland exclusively descriptively. The country is investing a great deal in a positive, environmentally friendly, innovative and modern image and should have some say over who may use that – descriptively or not. One could think of a sort of Article 6ter Paris Convention protection for country names, just like it exists already for country flags. They can only be registered as (part of a) trademark with permission from the relevant state. So, we have an extraordinarily interesting case arising, with a strong international political component on the one hand and an extremely fascinating legal doctrine component on the other. Eventually it led to the very first public oral proceedings of the GBoA on 6 September 2022.
Availability of geographical names: a complicated game of ‘yes it is, no it isn’t’?
Until this case with EUIPO, to characterise a geographical name of a place or a country as descriptive, it was necessary to consider for each one of the goods and services whether the country or the place in question has an existing reputation for the goods and services concerned. Accordingly, this was also the approach of IFL during the oral hearing. That so-called renown or reputation is a curious phenomenon because it has never been explicitly laid down as a criterion. This mainly concerns a generous interpretation of the Chiemsee dictum which states that “[Article 3(1)(c) of the Directive] does not prohibit geographical names as trademarks solely where the names designate places which are, in the mind of the relevant class of persons, currently associated with the category of goods in question; it also applies to geographical names which are liable to be used in future by the undertakings concerned as an indication of the geographical origin of that category of goods". The terms ‘currently’ and ‘in future’ are both explicitly included here.
There’s more to Iceland than just fish
In the case, Iceland argues its status as a sovereign state and, in its defence, IFL relies on the current legislation and case law. What follows is not so much normative-doctrinal debate, but rather a yes-no game with each one of the goods and services. Is Iceland known for it? Or does it have a reputation for it? However, we do get a little closer to the core of the matter in this way though, because if it is only about current reputation, then the word Amsterdam could only be refused for marijuana, window prostitution, clogs, tulips and museum services for instance, but it would be a great trademark for computers, cars, baguettes and dog food. This was surely not what was intended by the Chiemsee judgment. No, coffee beans don’t grow in Iceland, and the country also doesn’t have a reputation for tomatoes. But, they can be processed or originate from there, now or in the future. And that is exactly what the Chiemsee judgement is about.
The issue is just that in the meantime quite a quantity of case law has arisen that supports the arguments of IFL. For example, Alaska was able to remain a trademark for German mineral water because when the application was filed the European public were apparently not aware of mineral water being imported from Alaska. On the other hand, it recently became clear that Andorra could not be a trademark – not even for the Government of Andorra.
The GBoA is shifting 120 degrees
The GBoA can see what is coming and must do something else than simply wander down the same path it took till now, because otherwise, where would you draw the line? The previous distinction between fish and meat does not make sense anymore from a viewpoint of credibility and legitimacy. This is certainly so if you also take into consideration the valid argument of ‘favourable response’ raised from the Chiemsee judgment in the interests of Iceland. The GBoA has chosen a consistent path and is reasoning equally for all goods and services, namely that ICELAND is descriptive. It has taken as ultimate justification the fact that Iceland is a modern Western economy from where all named goods and services now, and in the near future, may originate. The new mantra is as follows:
“In view of the above, it is reasonable to assume that ‘(...)’ is, in the mind of the relevant class of persons, capable of designating the geographical origin of the goods. Due to the degree of familiarity amongst the relevant persons with the country of (....), and with that nation’s characteristics, as well as with the goods concerned, it is reasonable to conclude that the sign is liable to be used in the future by undertakings as an indication of the geographical origin of the goods. Consequently, it is plausible, credible and reasonable to consider the contested mark descriptive of the goods at issue from the perspective of the relevant public.”
Iceland therefore is not only geographically positioned closer to Andorra than to Alaska. Of course, the GBoA cannot make a 180-degree turn in one go, but this is a shift of at least 120 degrees, if not further. They are not yet distancing themselves completely from the idea that country names can be monopolised as word marks, but they are now explicitly preaching caution, and that is the big gain from this case. As expected, IFL has in the meantime lodged an appeal.