EUIPO’s Grand Board rules in favour of Iceland

The European Union Intellectual Property Office’s Grand Board of Appeal has rejected all of the requests of the British retail chain Iceland Foods Ltd regarding the use of the word mark Iceland. The company can no longer stop Icelandic enterprises from identifying themselves with their country of origin when marketing their goods and services in the European Economic Area.

The case concerns the basic interests of Icelandic enterprises engaged in foreign trade. The Icelandic authorities, in partnership with Business Iceland and the SA Confederation of Icelandic Enterprise, filed Iceland’s request for a declaration of invalidity with the European Union Intellectual Property Office (EUIPO) in 2016. Oral proceedings before the Board of Appeal were held last September. The Icelandic State’s 2016 request that EUIPO invalidate the word mark ICELAND was based on the trademark not fulfilling the legal requirements for registration as a European Union trademark.

In 2019, the EU Intellectual Property Office accepted all of the Icelandic State’s requests when it concluded that the retail chain’s trademark registration of the word mark ICELAND was invalid in its entirety. In its ruling of December 15, the Grand Board of Appeal confirms all the points of that finding. The time-limit to appeal the finding to the Court of Justice of the European Union is 15 February 2023.

“This unequivocal finding of the Board of Appeal is very pleasing; however, this entire case is rather absurd,” said Minister for Foreign Affairs Þórdís Kolbrún Reykfjörð Gylfadóttir. “It is of prime importance for Icelandic export enterprises to be able to refer to their origin, especially considering that our country has a reputation for purity and high quality. No-one should be able to claim ownership of the name of a sovereign state.”

“This finding is a big victory and protects the value inherent in being able to identify with the country of origin and the valuable trademark Iceland,” said Minister of Higher Education, Science and Innovation Áslaug Arna Sigurbjörnsdóttir. “It is also likely that the finding will affect developments in international intellectual property law and it is pleasing to think that Iceland is leading that process.”

The Icelandic authorities and parties to the case stressed that it was necessary to reach a substantive finding in the Board of Appeals’ deliberation of the case, this being an unprecedented case for Icelandic interests as there are no known incidences of a similar use of a geographical name within trademark law. The parties to the case have had several meetings over the years to discuss a compromise, but these have not yielded an acceptable conclusion.

The Board of Appeals’ findings regarding the word mark
The Board of Appeals’ findings regarding the logo