On 9 September, the Grand Board of Appeal of the European Union Intellectual Property Office (EUIPO) convened its first ever oral hearing on two cases – R 1613/2019-G and R 1238/2019-G – which might have repercussions on the registration of country names (and more in general geographical names) as trademarks. The cases concern the cancellation proceedings against two EU trademarks (EUTM) registered in the name of Iceland Foods Limited (a major British food retailer) for a number of goods and services.
The first contested trademark is the EUTM no 2673374 ICELAND (word). A cancellation action was filed by Islandsstofa (Promote Iceland), The Icelandic Ministry for Foreign Affairs and SA – Business Iceland, on November 14, 2016. The grounds invoked were Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b), (c) and (g) EUTMR. The cancellation action was upheld by the EUIPO Cancellation Division by decision of April 5, 2019 on the basis of Article 7(1)(c) EUTMR. The Cancellation Division held that the mark was descriptive of the geographic origin of the goods and services. Such decision was appealed before the EUIPO Board of Appeals (BoA) on June 5, 2019, which issued an Interim Decision on January 11, 2021 referring the case to the Grand Board. The Grand Board is called upon to decide on the scope of objections that can be raised under Article 7(1)(c) EUTMR when a sign is a geographical name.
Likewise, the second contested trademark is ICELAND (figurative) EUTM no. 011565736. A cancellation action was filed by Icelandic Trademark Holding eh on January 23, 2018. The grounds invoked were Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b), (c) and (g) EUTMR. Similarly, the cancellation action was upheld by the EUIPO Cancellation Division by decision of May 27, 2019 on the basis of Article 7(1)(c) EUTMR: the mark was considered descriptive of the geographic origin of the goods and services. Such decision was appealed before the EUIPO BoA on July 24, 2019, which issued an Interim Decision on January 11, 2021 referring the case to the Grand Board. Again, the Grand Board is called upon to decide on the scope of objections that arises under Article 7(1)(c) EUTMR when a sign is a geographical name.
