What are the boundaries when it comes to registering the name of a place, country, city or town as a trade mark?
This is the question that the Grand Board of Appeal of the European Union Intellectual Property Office (EUIPO) is set to decide when it hears its first ever oral appeal in a matter involving the registration of the trade mark ICELAND.
The mark ICELAND was registered for a wide range of goods as well as for retail services by Iceland Foods Limited, a major British food retailer. The Icelandic Government took issue with the registration of the ICELAND trade mark because, according to news reports, Iceland Foods relied on its registration to prevent the use of the name Iceland by Icelandic businesses in the promotion of their goods across Europe.
The Icelandic Government accordingly applied for the cancellation of all the ICELAND registrations and won on the basis that the name ICELAND is descriptive of the origin of the respective goods and services.
The use or registration of geographical names as trade marks is nothing new. The famous WINDHOEK lager or AMAZON ecommerce service are prime examples of how the name of a place can function perfectly well as a trade mark. However, you would be forgiven for getting the shivers about the ICELAND example. So what is the difference?
Legislation (both in Europe and South Africa) provides that marks may not be registered if they consist exclusively of a sign or indication that may serve to designate the geographical origin of goods or services. Therefore, if a geographical name is indicative of certain goods or services because they typically originate from there or the place has become known for them, the name cannot be adopted as a trade mark. OXFORD, for educational goods, for example, or GREECE for feta cheese.
Where the name of a place has become associated or has the potential to be associated with a category of goods or services, it is highly likely that a consumer would make that connection and use of the name could lead to confusion or even deception. That is what the trade mark legislation is intended to guard against.
The consideration, one would expect, would therefore be with what goods or services the name ICELAND is or could be associated. It would be reasonable to think that a box of frozen fish bearing the name ICELAND may originate from that country, which should result in it being excluded from registrability for that category of goods. However, what would be the case with stationery, which is one of the categories of goods for which the ICELAND mark was registered by Iceland Foods?
It is now up to the Appeals Board to make a ruling on this frosty battle and decide whether it is perhaps best to keep the freezer door closed or let the ICELAND trade mark melt away.