Choosing a brand name seems, at first glance, a creative decision. But what happens when you choose a name that already exists on the map? Can you “book” a country for your business? And, above all, how safe is such a brand in the long term?
A recent case by the General Court of the European Union provides a clear answer — and not at all comfortable for entrepreneurs.
The story behind the “ICELAND” brand:
The British supermarket chain Iceland Foods has registered the “ICELAND” trademark in the European Union since 2002, for a wide range of products and services: food, beverages, household products and retail services.
Years later, Icelandic authorities and organisations challenged this mark, claiming that the term ‘ICELAND’ cannot be monopolised, as it is simply the name of a country.
The dispute went through all the stages: EUIPO, the Board of Appeal (in extended terms, the ‘Grand Board of Appeal’) and, finally, the General Court of the EU.
In July 2025, the court confirmed: the “ICELAND” mark is void for the goods and services concerned.
Why the trademark was canceled?
The decision is not surprising for specialists, but it is extremely relevant for the business environment.
The General Court held that the name ‘ICELAND’ is, in essence, a descriptive geographical term. In other words, consumers do not perceive it primarily as a brand, but as a reference to a location.
Moreover, the court underlined an essential principle: geographical names must remain available to all economic operators.
Even if, at present, a particular product is not associated with that country, it is sufficient that such association is possible in the future or that it is reasonable for the public to do so for the mark to be regarded as descriptive.
An increasingly strict approach: it’s not just the present that matters, but also the future?
A key aspect of this decision is that the court not only looked at the current situation, but also at how consumers might perceive the brand in the future.
In other words, it is not enough to show that, today, your products have nothing to do with Iceland. It is enough for this link to be possible or credible for the public.
The General Court held that the name ‘ICELAND’ may suggest, for consumers, a geographical origin or a link with that country, even in situations where the goods do not actually originate there. For example, even if certain products are not made in Iceland, they could be processed there or associated with the country’s image — such as the idea of clean nature, sustainability, or high standards.
This approach makes things much more difficult for trademark owners. It is no longer enough to prove that there is currently no association between the name and the product. It also becomes relevant whether the public could reasonably make this association in the future.
In practice, this means that many geographical names will be considered descriptive even before they are actually used for that purpose — which significantly limits the chances of protection.
Why it doesn’t “save” you long use?
A common argument from trademark owners is simple: “I’ve been using this name for years, customers already know me.”
In theory, the law allows an initial descriptive term to become a trademark if, through heavy use, it comes to be perceived by the public as an indicator of a particular company. In practice, however, the threshold of proof is extremely high — especially at the level of the European Union.
In the case of ‘ICELAND’, the proprietor of the trade mark has not been able to demonstrate that the name has acquired distinctive character throughout the Union. In other words, it was not enough to show that it is known in certain markets or that it has a solid commercial presence.
In order to maintain the mark, it would have had to prove that:
- public in all relevant Member States
- perceives the term ‘ICELAND’ exclusively as a trade mark, not as the name of a country
This is a difficult requirement to meet even for very strong brands. In the absence of solid evidence in this regard, prolonged use is not enough to ‘save’ a descriptive mark.
What does this decision mean for entrepreneurs?
The “ICELAND” case confirms a simple but often ignored rule: the more descriptive the name, the more fragile the protection.
Geographical names are tempting — they sound good, inspire confidence, convey origin or quality. But, legally, they are among the riskiest choices.
If you want to delve into how a brand should be chosen from the beginning, we recommend this article as well.
How would such a case be analyzed in Romania?
The principles applied in the case of “ICELAND” are not only specific to the European level, but are also directly found in Romanian legislation.
Law No 84/1998 on trade marks provides that signs indicating the geographical origin of goods or services and those which are devoid of distinctive character may not be registered. In other words, if a name is perceived as a reference to a location rather than as a brand indicator, protection will in principle be denied.
In this context, a name such as “ICELAND”, “ROMANIA” or even the name of a region can raise serious problems when registering. It’s not just about what the applicant intends, but about how the public will perceive that sign.
The national authority, OSIM, applies the same principles as the EUIPO and the practice is consistently aligned with European case law. For this reason, a similar case would most likely have a comparable result in Romania.
If you’re thinking about building a brand or already have one and want to make sure it’s properly protected, it’s essential to analyze your legal risks early. Choosing the name is not only a marketing decision, but also a strategic one.
For assistance, representation or advice regarding the registration of a trademark with OSIM or EUIPO, the TAS team is at your disposal:
📧 Email: office@agentiatas.ro
📞 Phone: 0745 160 163
