Sometimes, situations that seem (almost) identical at first sight end up with totally different outcomes. In 2025, the EU’s General Court held in cases T-105/23 and T-106/23 (Iceland) that ‘Iceland’ could not function as a valid EU trademark for numerous food and agricultural products because the relevant public would perceive it as indicating geographical origin rather than commercial origin.
Thus, when the EUIPO examined EU application No. 018906786 (filed by the well-known Kentucky Fried Chicken International Holdings) to register the word mark ‘Kentucky’ for an extensive list of food and agricultural products in classes 29 and 30 of the Nice Classification, and a number of services for providing food and drinks in Class 43, it seemed a foregone conclusion.
Indeed, the EUIPO examiner raised an objection pursuant to Article 7(1)(b) and (c) in conjunction with Article 7(2) of the EU Trademark Regulation (EUTMR) against all the goods and services applied for, saying that the relevant Danish, Dutch, English, French, German, Hungarian, Italian, Polish, Romanian, Slovak, Slovenian, Spanish, and Swedish-speaking consumer, including the professional consumer specialised in food products, would understand the sign ‘Kentucky’ as meaning a state in the southeastern US, and would perceive the sign as providing information that the goods in classes 29 and 30 originate from there. Furthermore, the relevant consumer would think that the services in Class 43 – such as restaurant, takeaway, and fast-food services – involve the provision of goods in classes 29 and 30 that originate from Kentucky. Therefore, the sign was held to describe the geographical origin of the goods and services.
The applicant replied and, inter alia, requested that the EUIPO provide clear evidence that the relevant European public would create an association between ‘Kentucky’ (as a geographic term) and the goods and services at issue. However, the examiner maintained the refusal, also saying that it is not up to the EUIPO to show that other similar signs are used on the market (spoiler, the EUIPO Fourth Board of Appeal (BOA) did not agree on this).
The applicant appealed, and the BOA, in its decision R 1933/2024-4 of March 23 2026, reversed the refusal.
The Glashütte case
The BOA decision was possibly unexpected, because in 2023, the Fifth Board of Appeal had, for instance, (partially) refused the application No. 018727034 for Glashütte Original for lack of distinctive character given that it was found that the relevant public would immediately perceive ‘Glashütte’ as referring to the German town of Glashütte in Saxony that was considered to have a reputation in the field of watchmaking (the author has admittedly never heard of Glashütte but has also never worn a watch).
The BOA decision in Glashütte was further upheld by the General Court in case T-1163/23 of December 11 2024, where, in particular, the court held that as regards the argument relating to the lack of definition of the exact proportion of the public for whom the name “Glashütte” symbolises traditional high-quality watchmaking, in order for the ground for refusal to apply, it was sufficient that the lack of distinctive character of a mark exists for a non-negligible part of the relevant public.
Thus, the General Court noted that the BOA’s decision had limited its assessment to the non-negligible part of the relevant German public that is familiar with the town of Glashütte and that understands the term ‘original’ as evoking the idea of authenticity and fidelity to the original. Finally, the court noted that the applicant had not established that the relevant German public that is familiar with the town of Glashütte constitutes a negligible part of the relevant public interested in the goods and services in question.
Granted, Glashütte is the name of a town and not of a state or a country, but then came the Iceland decision, which concerned the name of a country, and yet in Kentucky, the BOA reached an opposite factual conclusion.
The board’s reasoning
The BOA accepted that Kentucky is a well-known US state. However, geographical recognition alone was considered insufficient to justify refusal. In the BOA’s analysis, the decisive question seems to have been whether the average EU consumer would perceive Kentucky as describing the geographical origin of the relevant food products and restaurant services.
The BOA held that it did not, since the applicant had proffered extensive objective evidence showing that Kentucky is not internationally recognised as a leading agricultural region for the relevant goods. In the BOA’s view, agricultural production rankings, export statistics, comparative economic data, and market evidence demonstrated that Kentucky is neither a major producer nor a major exporter of the products covered by the application. Furthermore, there was no evidence that EU consumers associate Kentucky with those goods.
The board therefore concluded that any future association between Kentucky and the products would be speculative rather than reasonably foreseeable.
Questions raised by the Kentucky decision
It is undeniable that the Kentucky decision is at odds with the Iceland and Glashütte precedents. It is true that the different outcome seems only to derive from the factual evidence that was alleged in establishing (or failing to establish) a link between the place and the relevant goods. However, some key considerations appear to have been given lower weight than they might have been given in the BOA’s overall review.
In Iceland, the General Court reiterated that Article 7(1)(c) does not require proof that the geographical name is already universally used as an indication of origin. It is sufficient that the name may reasonably be perceived by consumers as designating the geographical origin of the goods or that such an association is reasonably foreseeable in the future (see Section 27 of T-105/23, “Accordingly, a sign may not be refused registration on the basis of Article 7(1)(c) of Regulation No 40/94 unless the geographical name in respect of which registration as a trade mark is sought designates a place which is associated in the mind of the relevant class of persons, at the time the application for registration is made, with the category of goods and services concerned, or it is reasonable to assume that such an association may be established in the future”). Thus, the assessment is both present and prospective, from a reasonable point of view.
In Glashütte, on the other hand, the General Court also stated that it is sufficient that the lack of distinctive character of a mark exists for a non-negligible part of the relevant public (see Section 27). In particular, the court held that it was proved – but on the basis of a ‘well-known fact’ assumption (see Section 22), which is sometimes a suspect concept – that for a non-negligible part of German consumers, a well-established association between Glashütte and watchmaking already existed. Since the geographical meaning was immediate, concrete, and commercially relevant given the town’s perceived long-standing reputation in the field of watchmaking, consumers would see the sign as indicating where the watches originate and the sign therefore was (solely) descriptive.
However, in Kentucky, the BOA analysis was mostly, if not exclusively, based on data supplied by the applicant, which indicated that Kentucky could not, at the present date, be globally recognised as a leading agricultural region for the relevant goods (see Section 37 of decision No. 1933/2024-4, “From the foregoing, it follows that, even though the agricultural and farm production of Kentucky cannot be qualified as negligible, it is manifestly insufficient to consider that it has a global reputation for its agricultural, farming and food production”).
The foreseeability problem
Still, no part of the Kentucky decision convincingly addressed whether it is reasonable to foresee that in the future the name Kentucky may be perceived by consumers as designating the geographical origin of agricultural products, save to apodictically exclude it (see Section 46, “The Board does not see any basis either to consider it reasonable to assume that an association between the contested sign and the contested goods and services may be established in the future”).
In addition, in the present day, it already seems possible to argue that at least for certain agricultural-based products, a number of EU consumers may associate Kentucky (the state) with such products. In fact, the BOA failed to consider or give any weight (as instead the EUIPO examiner had done) to the fact that Kentucky is known worldwide as the birthplace and greatest producer of bourbon whiskey, a worldwide popular alcoholic beverage (Kentucky is where 95% of the world’s bourbon supply is made – see, for instance, at https://kybourbon.com/industry/).
Thus, the BOA’s conclusion that any future association between Kentucky and agricultural products would be speculative rather than reasonably foreseeable does not seem entirely well justified (or perhaps not sufficiently thought through), especially considering that in Class 43, Kentucky specifically designates “Services for providing food and drink; restaurant and takeaway restaurant services, fast food services; self-service restaurants and fast-food outlets; snack bars, cafes, canteens, cafeterias”; i.e., establishments where drinks – inter alia, bourbon whiskey – can be served, and where it is quite possible that a consumer might associate the name Kentucky with the origin of some of the drinks served therein.
In addition, the threshold of being “globally recognised” seems unreasonably high, given that in Glashütte, instead it was clearly stated that it is sufficient that the lack of distinctive character of a mark exists for a non-negligible part of the relevant public, and at least for that segment of EU consumers who appreciate bourbon whiskey and its Kentucky provenance, the sign ‘Kentucky’ indicates a designation of origin and thus may theoretically lack distinctive character.
Finally, in Iceland, the General Court considered “objective” factors such as Iceland's reputation for food production, the existence of significant exports of agricultural and food products to the EU, and the commercial reality that producers established in Iceland have a legitimate interest in describing their products as originating there to determine whether a connection existed and whether these factors demonstrated that competitors could reasonably wish to use the term ‘Iceland’ descriptively.
Comparing Kentucky and Iceland
Quick fact check. In the first quarter of 2026, Iceland’s population was 395,050, according to the latest data. The US census estimated Kentucky’s population at over 4 million on July 1 2025. Iceland’s GDP was $38.58 billion in 2025, according to the World Bank, while Kentucky’s GDP reached approximately $306.9 billion in 2025, based on Federal Reserve Bank of St. Louis data. Kentucky’s population is therefore 10 times bigger than that of Iceland, and its GDP is almost eight times larger.
Nevertheless, the BOA concluded that “there was no evidence that EU consumers associate Kentucky with agricultural goods” (but there was no contrary evidence either, and the EUIPO examiner has stated that “The state is renowned for its rich agricultural heritage, particularly its production of bourbon, tobacco and livestock, such as poultry and beef”, none of which was proven to be incorrect). The board therefore excluded the possibility that producers established in Kentucky could have a legitimate interest in describing their products as originating there, or that competitors might reasonably wish to use the term ‘Kentucky’ descriptively, whether now or in the future.
It is thus not easy to reconcile Kentucky with Iceland or Glashütte and it seems that the principal difference between these decisions lies not in how the deciding bodies assessed consumer perception but how the evidence that was (or not) proffered was ultimately assessed and how the EUIPO examiner insufficiently showed the descriptiveness of the contested sign in the sense of Article 7(1)(c) of the EUTMR.
Key takeaways
Although neither the General Court nor the BOA adopted a rule that country names are automatically unregistrable while state names are registrable, there still seems to be a difference in how the legal standard under Article 7(1)(c) of the EUTMR should be applied.
Ultimately, obtaining a registration for a geographical name still rests on a case-by-case approach and the BOA decision in Kentucky illustrates that, for geographical names, registrability depends less on geography itself than on whether reliable evidence (or assumed to be reliable) establishes a present (but it is unclear when it could be reasonably foreseeable in the future) descriptive link with the relevant goods or services.
However, one empirical lesson can be drawn: the more evidence that can be adduced in support (by the EUIPO or the applicant), the higher the possibility of prevailing. So do your homework.
