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Iceland supermarket loses EUTM battle with country of Iceland

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The EUIPO’s Grand Board of Appeal found that the marks suggested the supermarket’s goods and services originated from Iceland

The UK supermarket Iceland has lost its high-profile EU trademark battle with the country of Iceland, the EUIPO confirmed today, December 21.

The EUIPO’s Grand Board of Appeal (GBoA) held that although nothing prevented the registration of country names as trademarks, the registration of those names should be assessed carefully.

In its decision, handed down on December 15 but published today, the GBoA said it was particularly mindful of the fact that Iceland was a member of the European Economic Area, with deep economic, historical and socio-cultural ties to the EU.

The board said Iceland’s manufacturing capacity, combined with the fact that the country produced a wide range of goods and had sought to expand its foreign trade, worked in its favour.

Further, the country’s fame made it reasonable, credible, and plausible to assume that the EU public would perceive the EUTMs as descriptive of the geographical origin rather than indicative of commercial origin.

The GBoA’s finding upheld an earlier decision by the First Board of Appeal.

The case has become one of the most talked about trademark disputes in recent years.

In 2019, the EUIPO’s Cancellation Division invalidated two EUTMs for ‘Iceland’, owned by UK supermarket Iceland Foods, on the basis that they were descriptive of the geographical origin of the goods and services.

Iceland’s government and two non-governmental agencies had joined forces to invalidate the marks.

Iceland Foods appealed against the finding, after which the EUIPO’s First BoA referred the case to the GBoA.

The case was one of only a handful at the EUIPO opposition level – and the first at the GBoA – in which an oral hearing was conducted.

Although a smattering of oral hearings has been held at the lower boards, every case at the GBoA had been conducted without oral arguments, until the Iceland spat.

Speaking to Managing IP after the hearing, which took place in September, counsel said the oral hearing worked well and should be used again in the future.

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