Geographical names are often used and registered as trademarks. There are trademarks ‘Paris’ for bicycles, ‘Tokyo’ for software, ‘Stockholm’ for clothing, ‘Oslo’ for tobacco products, to name a few. All these trademarks are registered by the EU Intellectual Property Office and are only some examples of a broad list of brands consisting of geographical names adopted worldwide.
Countries, cities and names of different locations are popular among the brand owners. Choosing a trademark that incorporates a widely known geographical name is tempting not only because this name is familiar to the customers but because it can trigger positive associations in customers’ minds. Some geographical names can immediately refer to the qualities, characteristics, features or origin of the products and services. For example, Switzerland can be associated with the high quality of goods, Milano with fashion and Frankfurt with financial services.
Although it is not prohibited to use a geographical name as a trademark, even if this name is very famous, a certain caution should be taken. If the consumers can understand the connection between the name and the goods and services concerned, the trademark can be seen as descriptive and contrary to public interests. The use of such a trademark as well as investments into its promotion and potential registration can therefore be risky.
In its recent decision, the General Court of the EU stated that geographical names that are descriptive for the relevant goods and services should remain free for all and invalidated the trademarks ‘Iceland’ owned by one of the biggest food retailers in the UK – Iceland Foods Limited. The Court analysed each and every category of goods and services – among others, household appliances, food, beverages, paper goods and retail services – covered by the trademark and concluded that the name ‘Iceland’ is descriptive for these goods and services because the consumers will think that they originate from Iceland.
The Court has clarified that if the following factors are established, the trademark may be found descriptive (and consequently non-registrable):
- Knowledge of the geographical name by the relevant customers, AND
- Link between the geographical name and the goods and services.
The Court highlighted that geographical names that are associated with the goods and services, their origin, should not be monopolised by certain companies and must be available to all. Granting exclusive trademark rights to descriptive geographical names is against public interests.
It is worth noting that finding of the above factors will not lead to the automatic rejection of the trademark. Each and every case should be analysed separately, taking into account all other relevant circumstances, for instance, the nature of the goods and services, the reputation of the geographical name, potential future conflict of interests.
Bergenstråhle can assist with the analysis of the chosen trademark and associated risks of use and registration.
