INTA Files Amicus Brief on Registrability of Country Names as Trademarks

New York, New York, July 8, 2021—The International Trademark Association (INTA) has filed an amicus brief before the Grand Board of Appeal (GBoA) of the European Union Intellectual Property Office (EUIPO) in two parallel cases related to the registrability of country names or other geographical names as trademarks.

The cases concern the requested invalidity of the EU trademark (EUTM) ICELAND, which has been registered both as a word mark (case R 1613/2019) and a figurative mark (case R 1238/2019-1) since 2014 for a wide variety of goods and (retail) services.

Iceland Foods Ltd. is the EUTM owner. Founded in 1970, the company is a major British food retailer with over 900 grocery stores throughout the United Kingdom and additional company-owned or franchised stores in Europe, particularly in Ireland. Several official bodies of the state of Iceland, which is part of the European Single Market, initiated the invalidity proceedings.

In decisions dated April 5, 2019, and May 27, 2019, respectively, the EUIPO’s Cancellation Division declared the invalidity of the contested EUTMs under Article 7(1)(c) of the EU Trade Mark Regulation (EUTMR), primarily on the basis that the ICELAND marks were descriptive of the geographic origin of the goods and services involved.

Upon appeal by the trademark owner, the EUIPO’s Board of Appeal (BoA) referred the cases to the GBoA so that it could provide further guidelines on the scope of objection that arises under Article 7(1)(c) EUTMR when a sign is a geographical name.

INTA’s concern is that the Cancellation Division’s approach might de facto lead to the undesirable conclusion that names of countries or other geographical terms are inherently descriptive/non-distinctive in connection with all, or a substantial number, of the categories of goods and services.

In its brief, INTA has taken the position that the fundamental principles of public international law do not recognize an exclusive right of states to geographic terms, including country names. In particular, the Association’s position is that country names are registrable under the Paris Convention for the Protection of Industrial Property (Paris Convention) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) inasmuch as they constitute signs “capable of distinguishing the goods or services of one undertaking from those of other undertakings.”

The only exception is if a country (or any geographic area) is known or famous for specific goods/services or if there are clear indications that a relation between the goods/services involved and the geographical name for which trademark protection is sought would arise in the future. INTA supports the view that whether a specific country name or other geographical term would be perceived as a distinctive and non-descriptive sign in connection with the specific goods/services for which registration is sought must be determined on a case-by-case basis and not in the abstract.

About the International Trademark Association
The International Trademark Association (INTA) is a global association of brand owners and professionals dedicated to supporting trademarks and related intellectual property (IP) to foster consumer trust, economic growth, and innovation. Members include nearly 6,500 organizations, representing more than 34,350 individuals (trademark owners, professionals, and academics) from 185 countries, who benefit from the Association’s global trademark resources, policy development, education and training, and international network. Founded in 1878, INTA is headquartered in New York City, with offices in Beijing, Brussels, Santiago, Singapore, and Washington, D.C., and a representative in New Delhi. For more information, visit inta.org.