EU General Court’s “ICELAND” Ruling: A Blow to Trade Mark Protection for Geographical Names

On 16 July 2025, the General Court delivered an important judgment in case T-105/23 confirming the invalidity of the EU word mark “ICELAND” for a broad range of goods and services. This decision highlights the significant challenges for businesses trying to register country names and geographical terms as trade marks in the EU. It reinforces and arguably extends the General Court’s established jurisprudence, making it increasingly difficult to secure exclusive rights over geographical names.

Background and Facts

Iceland Foods Ltd, a UK-based retailer, registered the EU word mark “ICELAND” in 2002 for various goods and services, including foodstuffs, beverages, paper and packaging materials, household appliances like dishwashers and freezers, and retail services. In 2016, the public-private partnership organization Íslandsstofa (Promote Iceland), the country of Iceland, and the employer’s confederation SA – Business Iceland applied to the EUIPO for a declaration of invalidity, arguing that the mark was descriptive of geographical origin and lacked distinctiveness under Articles 7(1)(b) and 7(1)(c) of the EU Trade Mark Regulation (“EUTMR”). The Cancellation Division upheld the invalidity, and Iceland Foods appealed to the EUIPO’s Grand Board of Appeal, which dismissed the appeal. Iceland Foods then brought the matter before the General Court of the EU, with the support of the International Trademark Association (INTA), seeking revocation of the Grand Board’s decision and remittal to the Cancellation Division.

Decision of the General Court of the EU

The General Court dismissed Iceland Foods’ action in its entirety. The Court found that the mark “ICELAND” was descriptive of the geographical origin or characteristics of the goods and services in question, and thus fell within the absolute ground for refusal under Article 7(1)(c). The Court also held that the Grand Board of Appeal had conducted a sufficiently detailed analysis of the descriptive character of the mark for each category of goods and services. As a result, the registration was invalidated for all contested goods and services, and Iceland Foods was ordered to pay the costs.

Key points

• The Court reaffirmed that geographical names which may serve to designate the origin of goods or services must remain available to all traders and cannot be monopolised as trade marks (§25), especially if the public associates the name with the relevant goods or services or if such an association is reasonably foreseeable in the future (§27 and §37);
• The assessment of descriptiveness is not limited to current reputation but includes a prospective outlook, considering whether the geographical name could become associated with the goods or services (§38);
• The Court relied on evidence of Iceland’s capacity to produce and export a wide range of goods, as well as its reputation for environmental friendliness and innovation, to support the finding that “ICELAND” was descriptive for the goods and services at issue (§39);
• The Court also rejected the argument that Article 12(b) (now Article 14(b)) of EUTMR, which limits the effects of trade mark rights over descriptive terms, could justify registering a geographical name as a trademark. Instead, this provision ensures that others retain the right to use the name descriptively – such as indicating geographical origin – so long as it aligns with honest commercial practices (§80).

Comparison with previous case law

The “ICELAND” decision is consistent with, but arguably extends, the General Court and Court of Justice of the EU (“CJEU”)’s strict approach to the registrability of geographical names:

• In Windsurfing Chiemsee (C-108/97 and C-109/97), the General Court established that a geographical name cannot be registered if it is, or could reasonably become, associated with the goods/services in question. The General Court in “ICELAND” explicitly applied this test, emphasizing the need to keep such names available for all traders.
• In Peek & Cloppenburg v OHIM (T-379/03), the General Court required a holistic, multi-factorial analysis of the link between the place and the goods/services. The “ICELAND” judgment considered Iceland’s economic profile, export history, and environmental reputation.
• In Neuschwanstein,(C-488/16), the EU Court of Justice reinforced that the assessment of descriptiveness for geographical names must consider both current and potential future associations. The “ICELAND” decision follows this approach, finding that even a mere potential for future association can suffice to bar registration, but it appears more severe in its application. In fact, in Neuschwanstein, the CJEU admitted that the fact that those goods are sold as souvenir items is irrelevant for the purpose of assessing the descriptive character of the name ‘Neuschwanstein’. The souvenir function ascribed to a product is not an objective characteristic inherent to the nature of that product, since that function is determined by the free will of the buyer and is focused solely on that buyer’s intentions. Furthermore, the CJEU stated that the General Court did not err in law in finding that, as the Neuschwanstein Castle is not, as such, a place where goods are produced or services are rendered, the contested trade mark could not be indicative of the geographical origin of the goods and services it covers.
• In Andorra (T-806/19), the General Court accepted economic and statistical evidence as relevant to the assessment of descriptiveness. The “ICELAND” decision cited this case to support the use of economic data.
• In OLDENBURGER (T-295/01), the General Court held that it is consistent with usual practice for agricultural products and foodstuffs to be designated by a geographical term indicating origin. The “ICELAND” decision relied on this precedent for food and beverage products.

Comments and Takeaways

While the “ICELAND” decision is firmly grounded in the established case law, it arguably pushes the boundaries further by placing significant weight on the mere potential for future association, even where current reputation is limited. It also accepts broad economic and environmental factors as sufficient to establish descriptiveness across a wide range of goods and services. For example, the Court admits that cocoa, coffee and tea are not grown in Iceland and that it is unlikely that they will be in the future but still refuses registration on the basis that “they could be processed there and adapted to the local taste” (§53). Similarly, the General Court confirmed the descriptive character of the “ICELAND” mark for paper articles and packaging on the basis that Iceland is a country known for being environmentally friendly (§68). This makes it extremely challenging for applicants to overcome the absolute ground for refusal, even with evidence of lack of current association.

This approach may be seen as excessively restrictive, effectively precluding the registration of country names and many other geographical terms, regardless of their actual use or distinctiveness in the market. The decision thus raises questions about the balance between protecting the public domain and enabling brand owners to build distinctive marks based on geographical terms.

The Court also placed the burden of proof on the applicant who had “not put forward any specific argument or evidence to call into question the validity of the Grand Board of Appeal’s assessments” that Iceland was an environmentally friendly country, a popular tourist destination, and offered a wide range of goods and services (§36).

For practitioners, the case is a reminder to exercise caution when advising clients on trade mark strategies involving geographical names, especially country names. The evidentiary burden to demonstrate distinctiveness or lack of descriptiveness is high, and the threshold for refusal remains stringent.

We also know the difficulty of establishing acquired distinctiveness through the use of a trademark deemed as intrinsically descriptive in the European Union. If Iceland Foods still wants to have trade mark protection for “ICELAND” in the EU, it will need to prove that its mark has acquired distinctive character through use, which requires (i) proof that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as originating from a particular company (Kit Kat, C-215/14), (ii) in every Member State of the EU in which the mark did not, ab initio, have such character (Kit Kat, Joined Cases C‑84/17, C‑85/17 and C‑95/17). This is of course a very high burden. However, this will probably be easier for the name of a city than for that of a country, as the “Devin” case demonstrates (Devin., GCEU, 25 October 2018, T-122/ 17, appeal dismissed by CJEU, 11 July 2019; C-800/18).