[Guest post] Does ‘ICE LAND’ mislead consumers about the origin of the goods? (Unlike EUIPO) No, says Appeal Board in Uzbekistan

The IPKat has received and is pleased to host the following guest contribution by Katfriends by Khalil Jurayev and Javohir Kurbonov (My lawyer Law Firm) on a recent case concerning a request, lodged by Iceland (the country), to invalidate ‘ICE LAND’ as a trade mark registered in Uzbekistan. Here's what they write:

Does ‘ICE LAND’ mislead consumers about the origin of the goods? (Unlike EUIPO) No, says Appeal Board in Uzbekistan

by Khalil Jurayev and Javohir Kurbonov

AI-generated image of Uzbek Kat

Recently, the Appeal Board in Uzbekistan reviewed a claim challenging the validity of 'ICE LAND' as a trade mark. The claim, filed by the government of Iceland (Ministry of Foreign Affairs and Economics) argued that the trade mark was deceptive and could mislead consumers about the geographical origin of the goods. Ultimately, the Board rejected the claim, upholding the trade mark registration instead.

Background

Founded in 2017, Premium Uzbekistan specializes in producing a variety of alcoholic beverages and has established itself as a leading producer in Uzbekistan and across Central Asia.

The ‘ICE LAND’ trade mark was registered by the company in 2022 for class 33 goods, that is: alcoholic beverages, except beers, and alcoholic preparations for making beverages. Since then, the trade mark has been used actively and the products under this name can be found on the market.

Decision

The claim was dismissed by the Board (the decision was issued in Uzbek). According to Art. 10 of the Law on Trademarks, marks that may mislead the consumers, in particular, to (i) a certain quality of the product that does not correspond to its manufacturer or (ii) origin that create a false impression of the place cannot be registered.

The Board noted that the trade mark at issue here consisted of two words suggesting a ground covered with ice. Consequently, the Board concluded that when consumers see the product covered by ‘ICE LAND’ they do not perceive the trade mark as a name of a country.

Moreover, the Board also noted that the words 'ICE LAND' are not in a dominant position on the overall appearance of the bottle which means that, when consumers encounter the product, their attention is drawn more to other elements rather than the trade mark itself. This was a significant reason for not considering the trade mark misleading.

The Board further emphasized the necessity of defining the "average consumer" to assess the allegedly misleading nature of the trade mark. Given that the law regulating alcoholic beverages prohibits the sale of such products to individuals under the age of 21, the average consumer of these goods is an adult. This means that alcoholic beverages are not intended for consumption by the general public, and consumers of such products typically exercise heightened scrutiny when purchasing the goods. Thus, they are less likely to be misled regarding the origin of the product in question.

Another point put forward by the Board is that the trade mark is used to complement other elements of the product. The bottle features a picture of a valley with high mountains and a river. Above the trade mark, the word ‘ALASKA’ is depicted. The Board stated that Alaska is renowned for its nature, with enormous mountains covered with snow and ice. Therefore, the Board concluded that the trade mark served to explain the imagery on the bottle rather than misleading consumers.

Additionally, since English is not an official language in Uzbekistan and not all members of society are proficient in it and given that the country name is written differently in Uzbek (ISLANDIYA), it was concluded that consumers are less likely to perceive the ‘ICE LAND’ mark as the name of a country.

The claimant's argument that the trade mark hindered Icelandic companies from using their country's name in trade was also dismissed by the Board. It was also noted that Icelandic companies would have the right to use their country name in any case, as Uzbek legislation prohibits registering geographical names as trade marks.

Considering all these factors, the Board decided to dismiss the claim and uphold the validity of the trademark.

EUIPO Grand Board decision in the 'ICELAND' case

In contrast to the above-discussed case, the EUIPO decided to invalidate the ‘ICELAND’ trade mark held by Iceland Foods Ltd [here and here] in a case brought by the government of Iceland [IPKat here]. Even though almost the same approach was used in that case the outcome was different.

The Grand Board of the EUIPO ruled that the supermarket chain's use of the name ‘ICELAND’ could mislead consumers about the geographical origin of the goods, given Iceland's significant reputation and identity.

Another argument put forward was public interest. It was stated that signs which are used to designate characteristics of the goods or services (geographical origin) should remain freely available to all undertakings that offer goods and services with the same characteristics. Granting a monopoly over ‘ICELAND’ was seen as hindering others' rights.

Furthermore, it was highlighted that the EU target public would perceive ‘ICELAND’ as being descriptive of the geographic origin of the goods and services at issue rather than an indication of commercial origin. Thus, the Grand Board ruled to invalidate the registration.

Comment

Contrasting the Uzbek ‘ICE LAND’ case to the EU ‘ICELAND’ one underscores the complexities and nuances of trade mark law, particularly concerning geographical names and consumer deception. The Uzbekistan Appeal Board's decision to uphold the ‘ICE LAND’ trade mark reflects a contextual and consumer-specific approach, considering the overall representation of the product and the scrutiny exercised by consumers of alcoholic beverages In contrast, the EUIPO's invalidation of the ‘ICE LAND’ demonstrates a greater focus on public policy considerations and an interpretation focused on preventing monopolization of geographical names and ensuring fair trade practices. These cases highlight the importance of a comprehensive assessment of all factors that can be a reason for potential consumer deception.