INTA wades into frosty EU dispute over country names

Trademark association says EU is “stretching the concept of a country’s reputation and image” by refusing a registration for ‘Iceland’ | Key questions emerge in clash between UK supermarket chain and EU Intellectual Property Office | INTA warns over potential change in status quo.

In a rare move, the  International Trademark Association (INTA) has intervened in a case before the Court of Justice of the European Union ( CJEU), arguing that brand owners should be able to register country names as EU trademarks.

The submission of the  statement of intervention on Tuesday, September 19, follows the court’s decision to grant INTA permission in July to intervene in certain cases “on the basis of having established an interest in their outcome”.

In its brief, the association warns about the issues raised by Iceland Foods v European Union Intellectual Property Office ( EUIPO), highlighting its potentially far-reaching consequences for trademark owners.

“A future decision in the present case could change the status quo that has existed on this issue in the EU trademark system for nearly 25 years, which might have a disruptive effect on…sector/industry,” said INTA.

Case background

The question over the registrability of country names arose when UK supermarket chain  Iceland Foods applied for two EU trademark registrations—the word mark ‘Iceland’ and a mark showing a red and orange rectangle with white text to cover a range of goods and services in classes 7, 11, 16, 29, 30, 31, 32, and 35 of the Nice Agreement.

In 2016,  Íslandsstofa (Promote Iceland), the Icelandic Ministry for Foreign Affairs and Business filed a cancellation action against the registration of both marks, which was upheld by EUIPO Cancellation Division three years later. In doing so, the Division held that the trademarks contravened guidelines concerning geographic signs set out under  Article 7(1)(c)EUTMR.

After the supermarket chain appealed the decisions, the EUIPO Board of Appeals referred both cases to the EUIPO Grand Board of Appeal, prompting INTA to file third party observations in the proceedings.

The association contended that even if a geographical name was evoked in the minds of consumers when seeing the mark, it would not directly describe any of the characteristics of the goods/services—and would not automatically fall within the absolute ground for refusal provided in Article 7.

It further argued that the only scenario under which a geographical name—including the name of a state— should be refused protection is when the area or country “is famous, known for or associated with the specific goods/services”, or if there are clear indications that “such relation between the goods/services involved and the geographical name for which trademark protection is sought would arise in the future”.

Positive images

Nonetheless, the board proceeded to dismiss the appeals and upheld the cancellation actions. While it confirmed in its decision that “a country name may on occasion function as a trademark”, it noted that “geographical marks that include the name of a country may by their very nature be perceived differently from other geographical indications, such as names of regions, lakes and mountains”.

It found that average consumers are more in the habit of making assumptions about the origin of products on the basis of their national provenance than in relation to other types of geographical signs.

This predisposition, according to the board, is especially true of the names of the countries of the European Union or European Economic Area, because EU consumers are in closer geographic proximity to them.

Consequently, the board concluded that it “was reasonable, credible, and plausible” to foresee that the EU target public will now, or at some point in the future, perceive the contested mark “as descriptive of the geographic origin of the goods and services at issue rather than as an indication of commercial origin”.

Stretching concepts

But in its statement this week, INTA countered that the decision stretches the concept of a country’s reputation and general positive image onto all categories of goods and services applied for—which, it said, goes beyond the decisions of the CJEU in past cases.

The association further argued that it is the possible association between the geographical name and the specific goods/services that would make the name descriptive or non-distinctive and prohibit its registration as a trademark—not merely a general knowledge among consumers that a geographical area exists.

Essentially, INTA contended that state names should not per se be excluded from trademark registration and— as with all other geographical names— state names should not per se be considered descriptive of geographic origin, quality, or other characteristics of goods/services.

Additionally, the statement points out that the language of Article 7(1)(c) EUTMR does not actually quote state names.

While country names may fall into the category of geographical indications and, therefore, have to be treated alike, this potential should be assessed and “does not yet follow from the law”, said INTA.

A trademark application that includes a state name, whether it is descriptive and/or non-distinctive with respect to specific goods or services, should be decided on a case-by-case basis, the association explained.

Existing case law

It went on to request that the decision be annulled given that the EU trademark register and the national trademark registers of EU member states “contain thousands of trademarks consisting of or including state names, or their adjectival forms”.

“The validity of all or a part of those marks and their enforcement vis-à-vis third parties, as well as of all marks consisting of or containing other geographical terms, might therefore be adversely affected, as well as that of future applications, if the contested decision is upheld,” said INTA.