Iceland Foods Ltd
v
European Union Intellectual Property Office
Judgment of the General Court (Seventh Chamber) of 16 July 2025
(EU trade mark – Invalidity proceedings – EU figurative mark ICELAND – Absolute grounds for invalidity – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001))
EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks consisting exclusively of signs or indications which may serve to designate the characteristics of a product or service – Concept
(Council Regulation No 207/2009, Art. 7(1)(c))
(see paragraphs 22, 23)
EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks consisting exclusively of signs or indications which may serve to designate the characteristics of a product or service – Assessment of the descriptive character of a sign – Geographical names
(Council Regulation No 207/2009, Art. 7(1)(c))
(see paragraphs 24-29, 46, 70)
EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks consisting exclusively of signs or indications which may serve to designate the characteristics of a product or service – Figurative mark Iceland
(Council Regulation No 207/2009, Art. 7(1)(c))
(see paragraphs 30, 36-39, 46-54, 58-63, 67, 69-71)
Résumé
By its judgments, the General Court rules on the descriptive character of two signs that reproduce the name of a European country (ICELAND) and dismisses the actions brought against the decisions of the Grand Board of Appeal of the European Union Intellectual Property Office (EUIPO) on the ground that those signs are descriptive of the geographical origin of the goods and services which they cover or their characteristics.
Iceland Foods Ltd, the applicant, submitted to EUIPO applications for registration of the word sign ICELAND and the figurative sign Iceland in respect of various goods and services, on 19 April 2002 and 12 February 2013 respectively. Subsequently, two applications for a declaration of invalidity of the marks at issue were filed with the Cancellation Division of EUIPO in respect of a number of the goods and services covered by those marks. (
1) The Cancellation Division upheld those applications for a declaration of invalidity in respect of all the goods and services concerned.
The applicant accordingly filed a notice of appeal against each of the Cancellation Division’s decisions. By decisions of 15 December 2022, the Grand Board of Appeal dismissed those actions (‘the contested decisions’). The Grand Board of Appeal found that the marks at issue were perceived by the relevant public, namely the English-speaking general public of the European Union, as an indication that the goods and services covered by them came from Iceland and that they had to be regarded as descriptive. (
2) After noting that it was sufficient that one of the absolute grounds for refusal applied in order for the signs at issue not to be registrable as EU trade marks, the Grand Board of Appeal found that, in any event, if the marks at issue were also to be examined in the light of their distinctive character, (
3) it would inevitably be found that they had none. (
4)
The applicant accordingly brought an action before the Court against each of the contested decisions. (
5)
Findings of the Court
The Court recalls, at the outset, that there are two situations in which it is not permissible to register geographical names. The first concerns the registration of geographical names as trade marks where they designate specific geographical locations which are already famous or known for the category of goods or services concerned and which are therefore associated with that category of goods or services by the relevant class of persons. The second concerns the registration of geographical names which are liable to be used by undertakings and must remain available to such undertakings as indications of geographical origin of the category of goods or services concerned.
In addition, the Court finds that the assessment of the descriptive character of the marks at issue requires taking into account a set of relevant factors such as the knowledge of Iceland and of its characteristics and the link between the categories of goods and services and the marks at issue.
In that regard, it observes that the marks at issue refer to the name of a country which is located in Europe, is composed of a territory which is, admittedly, relatively sparsely populated, but which has a surface area larger than that of some Member States of the European Union and of the European Economic Area (EEA).
The Court accordingly notes that the word ‘Iceland’ was recognised by a significant part of the relevant public, which consists of the English-speaking general public of the European Union.
Furthermore, the Court confirms that the evidence on which the Grand Board of Appeal relied establishes, first, that Iceland was an environmentally friendly country, on account of, in particular, multiple geothermal and hydroelectric power stations, secondly, that Iceland was a popular tourist destination and, thirdly, that Iceland offered a wide range of goods and services, while maintaining, in respect of those goods and services, significant commercial relationships with the EEA countries.
The Court also notes that it is appropriate to take into account a set of circumstances, existing on the date of the application for registration of each mark at issue, and to do so with a prospective outlook and without being limited to only the question of the ‘reputation’ which Iceland enjoyed among the relevant public, or which it was liable to enjoy in the future, in relation to the goods and services covered by the marks at issue. In addition, the various characteristics of Iceland are significant for the purpose of ascertaining the extent to which the geographical origin of the goods or services in question is likely to be relevant, in the mind of the relevant class of persons, for the assessment of the quality or other characteristics of the goods or services concerned. For those reasons, the Court found that the Grand Board of Appeal was correct to take into account the economic prosperity, including the assessment of gross domestic product (GDP), skilled workforce and even the presence of various industries, since those factors could make it possible to ascertain whether Iceland was likely to become famous or known as a place of geographical origin in relation to the goods and services in question.
Next, as regards the goods including foodstuffs of plant and animal origin and liquids intended for human consumption, the Court finds that the marks at issue have a descriptive character in respect of those goods. Accordingly, on the date of registration of each of the marks at issue, Iceland produced and exported such goods and was capable of producing others, with the result that where one of those products is marketed under one of the marks at issue, it may be perceived as originating from that country. Furthermore, assuming that the present export of foodstuffs by Iceland is not a relatively significant part of its exports in general, the Court finds that that claim does not make it possible to call into question the descriptive link between the marks and the goods concerned in so far as that claim does not take into account, from a prospective viewpoint, the link which may reasonably be established between the mark at issue and the goods concerned.
Lastly, the Court notes that the Grand Board of Appeal carried out a detailed analysis of the descriptive character of the marks at issue in respect of all of the goods and services in question. In addition, as regards the figurative mark Iceland, (
6) it adds that neither the typography nor the colour of the mark at issue give it an unusual or striking effect. The word element of that mark is represented in a font of standard white letters, without any typographical specificity. While, admittedly, it is positioned on a red, orange and yellow rectangular background, of which the yellow and orange effect gives it the impression of having a slightly faded look, the coloured background, in particular in orange and yellow colours, is, in essence, common in the advertising and on packaging, with the result that the consumer may regard it as a decorative element. In those circumstances, the figurative elements of the mark at issue served only to highlight the word element of that mark and did not alter in any way the descriptive content conveyed by the latter element.
7) concerning the limitation of the effects of the mark, which would allow Icelandic entities to use the name ‘Iceland’, the Court recalls that that provision is intended, inter alia, to resolve the problems posed by registration of a mark which consists wholly or partly of a geographical name and does not confer on third parties the right to use the name as a trade mark but merely guarantees their right to use it descriptively, that is to say, as an indication of geographical origin, provided that it is used in accordance with honest practices in industrial and commercial matters. In addition, the fact that Article 12(b) of Regulation No 40/94 ensures that every trader may freely use indications concerning the characteristics of goods and services does not guarantee the protection of the public interest underlying Article 7(1)(c) of that regulation. On the contrary, that fact clearly discloses the need for the ground of refusal set out in Article 51(1)(a), read in conjunction with Article 7(1)(c), of Regulation No 40/94 – which, moreover, is an absolute ground for refusal – to be actually applied to any sign which may designate a characteristic of the goods or the services in respect of which the mark is registered.
1) The goods and services in Classes 7, 11, 16, 29 to 32 and 35 and in Classes 29, 30 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957.
2) In accordance with Article 7(1)(c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark ( OJ 1994 L 11, p. 1 ), subsequently Article 7(1)(c) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark ( OJ 2009 L 78, p. 1 ), which was itself replaced by Article 7(1)(c) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark ( OJ 2017 L 154, p. 1 ).
3) In accordance with Article 7(1)(b) of Regulation (EC) No 40/94, cited above, subsequently Article 7(1)(b) of Regulation (EC) No 207/2009, cited above, which was itself replaced by Article 7(1)(b) of Regulation (EU) 2017/1001, cited above.
4) The claim of the applicants for a declaration of invalidity that the marks at issue were contrary to public policy (within the meaning of Article 51(1)(a) of Regulation No 40/94 (subsequently Article 52(1)(a) of Regulation (EC) No 207/2009, now Article 59(1)(a) of Regulation 2017/1001) in conjunction with Article 7(1)(f) Regulation No 40/94 (subsequently, Article 7(1)(f) of Regulation No 207/2009, now Article 7(1)(f) of Regulation 2017/1001)), was rejected by the Grand Board of Appeal as inadmissible on account of its late submission. Accordingly, that issue was not examined by either the Board of Appeal or, subsequently, the Court.
5) Cases Iceland Foods v EUIPO – Íslandsstofa (Promote Iceland) and Others
(ICELAND) (T‑105/23) concerning the word mark ICELAND and Iceland Foods v EUIPO – Icelandic Trademark (Iceland) (T‑106/23) concerning the figurative mark Iceland.
6) Judgment of 16 July 2025, Iceland Foods v EUIPO – Icelandic Trademark (Iceland) ( T‑106/23 , EU:T:2025:730 ).
7) Subsequently Article 12(b) of Regulation No 207/2009, now Article 14(b) of Regulation 2017/1001.
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