Iceland supermarket loses EUTM battle with country of Iceland

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Iceland supermarket loses EUTM battle with country of Iceland

Iceland news-comp.jpg

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.

more from across site and SHARED ros bottom lb

More from across our site

IP is becoming one of the most significant drivers of major deals, and law firms are altering their practices to reflect the change
In the second in a new podcast series celebrating the tenth anniversary of IP Inclusive, we discuss IPause, a network set up to support those experiencing (peri)menopause
Firms are adapting litigation strategy as Brazil’s unique legal system and technical expertise have made preliminary injunctions a key tool in global patent disputes
A ruling on confidentiality by the the England and Wales Court of Appeal and an intervention from the US government in the InterDigital v Disney litigation were also among top talking points
Moore & Van Allen hires former Teva counsel Larry Rickles to help expand the firm’s life sciences capabilities
Canadian law firms should avoid ‘tunnel vision’ as exclusive survey reveals client dissatisfaction with risk management advice and value-added services
In major recent developments, the CoA ruled on director liability for patent infringement, and Nokia targeted Paramount at the UPC and in Germany
Niri Shan, the newly appointed head of IP for UK, Ireland and the Middle East, explains why the firm’s international setup has brought UPC success, and addresses German partner departures
Vlad Stanese joins our ‘Five minutes with’ series to discuss potentially precedent-setting trademark and copyright cases and his love for aviation
Heath Hoglund, president of Via LA, discusses how it sets royalty rates and its plans to build on growth in China
Gift this article