In trademark law, descriptive terms cannot be monopolized as trademarks. Such indications must remain available for everyone. For example, the word “apple” cannot be a trademark for apples. Since the landmark Chiemsee judgment (concerning the name of the largest lake in Bavaria), it has also been clear that geographical names in many cases cannot function as trademarks. With geographical designations, consumers will often assume that the word indicates the origin of the goods or services, not the brand name. Competitors offering products from that place must, of course, also be able to use the name freely.

This proved to be a stumbling block for the British supermarket chain Iceland, known mainly for frozen products. In 2014, its red-orange logo containing the word “Iceland” was registered at the European Union Intellectual Property Office (EUIPO) for various foodstuffs and related retail services. Icelandic Trademark Holding, a company owned by the Icelandic government that holds trademark rights to, among others, “Icelandic,” sought cancellation of the supermarket’s mark, arguing that it was descriptive. The EUIPO and its Board of Appeal agreed. The supermarket chain did not accept this outcome and appealed to the General Court of the European Union.

Unfortunately for retailer Iceland, the General Court also considered its mark descriptive. Consumers, upon seeing the mark, could be led to believe that the foodstuffs originate from Iceland, or that the retail services covered by the Iceland trademark are provided from Iceland. It is not necessary that Iceland is actually known for such foodstuffs or services. As long as the goods or services can now or in the future be associated with Iceland, the Iceland mark cannot be upheld. For the time being, plans involving the Iceland trademark must therefore be put back in the freezer.