INTA Appears as Intervener Before the General Court of the European Union in Luxembourg

Represented by members of its International Amicus Committee, INTA appeared before the General Court of the European Union (GC) as an intervener in the oral hearing of cases T-105/23 and T-106/23 of Iceland Foods Limited (IFL) v. European Union Intellectual Property Office (EUIPO).

The cases concern the internationally controversial and highly sensitive issue of registrability of names of states as trademarks. At issue are two EU Trade Mark registrations: No. 2673374 ICELAND (word mark) and No. 011565736 (figurative) of IFL, registered by a British supermarket chain for goods and services in Classes 7, 11, 16, 29, 30, 31, 32, and 35.

These registrations were the object of cancellation actions filed by Íslandsstofa (Promote Iceland), the Icelandic Ministry for Foreign Affairs, and SA—Business Iceland. The grounds invoked under Articles 7(1)(b), (c), and (g) of the European Union Trade Mark Regulation (EUTMR) were nondistinctiveness, descriptiveness, and deceptive nature.

The EUIPO Cancellation Division upheld the cancellation actions on the grounds of descriptiveness under Article 7(1)(c) of the EUTMR. The cases were referred, due to their difficulty, to the EUIPO Grand Board of Appeal (GBoA). INTA filed Third-Party Observations through its International Amicus Committee before the GBoA. The GBoA upheld the cancellation actions. The decisions were then appealed before the GC. INTA was granted leave to intervene before the GC on the basis of having established an interest in the cancellation outcomes. INTA filed its intervention and appeared before the oral hearing of the cases in Luxembourg in October 2024.

INTA’s position is that state names are not per se excluded from trademark registration. As with all other geographical names, state names are not per se descriptive of geographic origin, quality, or other characteristics of goods or services. Subsequently, also for state names, the normal test for determining descriptiveness should apply.

In particular, whether a state name is descriptive and/or nondistinctive must be established with respect to specific goods or services and not in the abstract. It should be decided on a case-by-case basis and in accordance with the existing case law of the Court of Justice of the European Union. The judicator bodies should assess whether a specific name state (or other geographical names) would be perceived as descriptive or nondistinctive with respect to the specifically designated goods or services.

As presented in its oral arguments before the GC, INTA seeks to ensure, through its intervention, that a ban to protect names of countries as trademarks, and, in general, geographical names, which is not foreseen in the current codified law, is not de facto introduced through case law.

Indeed, in the contested decisions, the GBoA recognized that no such statutory ban exists; however, it expressed the view that “it may nonetheless be open to question whether […] it is in the public interest to allow monopolisation of the names of EU and EEA Member States (para. 105, infra).” INTA submitted in its oral arguments that for this to happen, there should be legislative intervention through a process that takes into consideration all implications, as well as input from all interested stakeholders. This legislative intervention would also address the resolution of conflicts with the thousands of existing trademark registrations that include country names—many of which were filed by the states themselves.

By going through the relevant case law, INTA submitted that the test for descriptiveness requires that the question for a direct, causal, and necessary association be answered in the affirmative and that the same would be true for the future association test, namely, whether it is reasonable to assume that a direct, causal, and necessary association would occur in the future, using the same criteria. This is a specific connection or link that immediately allows the public concerned to perceive, without further thought, a description of those goods or services or one of its characteristics. INTA further stressed that the possible reputation of a country per se is not a decisive factor: there must be a connection or link in the sense that the country name should be currently known or reasonably known in the future for the goods or services concerned. The yardstick is only the perspective of the average consumer in the EU.

The implications of considering as sufficient for descriptiveness a mere current or future association, or coming into mind of a country, are huge. They span from general characteristics of the country, which are in the public domain, down to the mere possibility that a country may produce, given the current state of technology, any goods or services now or in the future. Under such an approach, not only a large number of registrations owned by states and state entities would be vulnerable to cancellation, but also a large number of marks that consist of or contain state names along with other, arguably not highly distinctive, elements.

The International Amicus Committee members representing INTA consisted of Andreas Lubberger (Lubberger Lehment Rechtsanwälte Partnerschaft, Germany), Noemi Parrotta (Spheriens, Italy), and Committee Chair Marina Perraki (Tsibanoulis & Partners, Greece).

The decision of the GC is awaited with great interest.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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