Is it possible to register country names as trademarks?

The EUIPO’s Grand Board is examining an interesting case relating to the use of a country name as a trademark. The case refers to the word trademark Iceland EUTM 2 673 374 and word-figurative trademark EUTM 11 565 736 (see Figure 1). The Icelandic Ministry for Foreign Affairs filed an invalidation motion against the British supermarket chain Iceland. The cases involve an invalidity request made inter alia, and deal with the alleged descriptiveness and non-distinctiveness of the figurative and word marks in relation to a range of goods and services in Classes 7, 11, 16, 29, 30, 31, 32 and 35. Both trademarks were invalidated by the Cancellation Division, therefore we do not yet have the final word on this case. After six years, by the interim decision of 11 January 2021, the First Board of Appeal decided to refer the case to the Grand Board (cases R 1238/2019-G Iceland and R 1613/2019-G Iceland (figurative)). Oral proceedings will be held in person on 9 September 2022 at 9.30 am, Avenida de Europa, 4, 03008 Alicante, Spain.

Figure 1

Country names can hold powerful branding power, and nations may use their own names for economic and cultural benefit. Country names can however be vulnerable to misappropriation and exploitation by entities that have no connection with them.

Of course, the basic function of a trademark is to distinguish goods or services. If the sign being applied for represent the characteristics of the goods or services in question ― for example, by indicating their place of origin ― it is likely to be refused registration because it lacks distinctiveness and is descriptive. According to Polish law and practices, this is the most common ground for refusal of registration of country names as trademarks.

In accordance with Article 129¹ 1(3) of the Industrial Property Act of Poland:

signs which consist exclusively of signs or indications which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods, cannot be registered.

Therefore, if a trademark consists solely of a country name, it would be considered descriptive of the place of origin of the goods or services and therefore not registrable (eg, Poland, Iceland, PL, ISL). In case II SA 433/03 of 28 May 2004, the Voivodship Administrative Court in Warsaw held that it is impossible to register a trademark that consists of the two-letter country code defined in the ISO standard, in the present case the code of South Africa. This judgment was upheld by the Supreme Administrative Court in Warsaw (case GSK 1423/04).

If a word mark contains a country name and some other elements, which may also serve to designate the previously indicated elements, it will be considered descriptive and therefore not registrable (eg, Polish tea for tea in Class 30).

If a trademark contains a country name and some other descriptive elements but it also contains some graphic elements, it may be registered provided the graphic elements are sufficiently distinctive to indicate the origin of goods and services.

Examples of registered Polish trademarks:

R 281817 registered in classes 30 and 35

Translation: Polish Poultry, R285893 registered in Class 29

A country name may also be refused registration on the grounds that the mark would be misleading, deceptive or false. In accordance with Article 129¹ 1(12) of the aforementioned act, “signs which may, in their substance, mislead the public, in particular as to the nature, quality or the geographical origin of goods cannot be registered”. This would be the case if the goods and services clearly have no connection with the country from which the name is taken.

This regulation refers to absolute grounds of registration, and these grounds are examined by the Polish Patent Office ex officio before the mark is published. It is not possible to file an opposition against an application based on absolute grounds. However, at any point before the trademark registration, third parties may submit written observations to the office explaining on which grounds the trademark should not be registered.

From a public policy point of view, country names should not be able to be registered as trademarks because it is in the interest of the public that such names remain available for use by any trader to provide information relating to the goods or services being sold.