Is it possible to register the name of a country as a trademark? That was the main question discussed during the first oral hearing held by the Grand Board of Appeal (Grand Board), the last 9th of September, in the context of the Invalidity actions pursued by Islandsstofa (Promote Iceland), The Icelandic Ministry for Foreign Affairs, SA – Business Iceland and Icelandic Trademark Holding ehf. against the EUTM registrations for the word mark ICELAND (R 1238/2019-G) and the figurative mark ICELAND (R 1613/2019-G), both registered by Iceland Foods Limited.

The Invalidity applications were sustained on the grounds of Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b), (c) and (g) EUTMR; however, the actions raised important legal questions relating to the scope of objection of Article 7(1)(c) EUTMR when a sign is constituted solely by geographical name.

The mentioned article states that a sign shall not be registered as a trademark when it “consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service”, nevertheless, the Chiemsee Decision (CJEU 4 May 1999, C-108/97 and C-109/97, par 33 and 25, CHIEMSE) clarified that Article 7(1)(c) EUTMR does not provide a general prohibition for the registration of the name of a country as a EUTM, situation that can be possible as long as the geographical name is not descriptive, or it had acquired distinctiveness through use.

According to the case-law, when assessing a geographical name as a trademark under the scope of objection of Article 7(1)(c) EUTMR, the examiner first must verify if the term is understood by the relevant public as a geographical name to designate a place of origin (taking into account the reasonably well-informed consumer). If the geographical name is unknown to the relevant public as a designation of a geographical location, the ground of refusal of Article 7(1)(c) EUTMR won’t be applicable.

As a second step, the examiner will have to verify if the name designates a place that is currently associated with the claimed goods or services in the mind of the relevant public or if it is reasonable to assume that the name will be associated with those goods or services in the future.

To sum up, in order to assess a geographical name as a trademark the examiner must take into account if the name is a geographical term, the characteristics of the place designated by the term and the category of the goods or services.

Even though this criteria is settled in the EUIPO Guidelines, the current invalidation cases have questioned the 2-steps examination, wondering if the positive character that a geographical name projects or the economic weight of a nation must be take into account during the analysis of the objections under Article 7(1)(c) EUTMR, if the reputation of the geographical name in relation with one product can be extended to others and the limits of a valid ‘futurity objection’ on geographical grounds under Article 7(1)(c), inter alia.

The other question discussed during the hearing was whether the registration of the name of a country involves aspects of public policy. Regarding this question, the applicants afirmed that even when they didn’t base their application for a declaration of invalidity on Article 7(1)(f) EUTMR, the Grand Board is entitled to raise the ground of public policy ex officio.

About this matter, the trademark owner argued that the applicants didn´t invoke Article 7(1)(f) EUTMR in their application and that the examination shall be limited to the grounds and arguments submitted  by the parties in their opportunity; anyway, the owner added that attempting to ban the registration of country names as trademarks through the interpretation of this absolute ground of refusal is illegitimate, as there is no official source of law or policy that supports the prohibition.

There is no doubt about the legal importance of the current debate, and its possible impact in the criteria to conduct the substantive examination of geographical names. However, currently in order to constitute a geographical name as a EUTM, the name must be distinctive or has acquired distinctiveness through use, and the name must not be descriptive, deceptive or be in conflict with a Designation of Origin or a Geographical Indication.

We will be waiting for any new updates of the cases.

Autors:: Ewa Niesiobedzka-Krause i Liz Solano Carrillo – KONDRAT & Partners, biuro@kondrat.pl;