As we have written previously, the European Commission published a position paper on IP rights after Brexit in September, setting out its ideas on how it wants to see unitary IP rights handled after Great Britain departs from the EU. But, this wasn’t the only Brexit story to interest IP practitioners last month: the EU Intellectual Property Office (EUIPO) also issued its judgement in an appeal case related to the question of whether the term ‘BREXIT’ is in itself eligible for trademark protection.
The application in question dates back to 2016, when registration was sought for an EU word mark to protect ‘BREXIT’ in class 5 (including dietary/food supplements and vitamin drinks), class 32 (energy drinks, beer, fruit and vegetable juices) and class 34 ((electronic) cigarettes). The application was refused by EUIPO on absolute grounds, according to Article 7(1)(b) “devoid of distinctive character” and (f) “contrary to public policy or to accepted principles of morality” of the EUTMR.
In the EUIPO examiner’s view, the term ‘BREXIT’ was not eligible for trademark protection because European citizens would be too familiar with the term (b), the UK’s widely discussed withdrawal from the EU being a ‘serious moment in modern European history’. In addition, the registration had the potential to offend (f), especially if it were allowed for products such as energy drinks and (e-)cigarettes. The examiner referred here to the 48% of Britons who voted in favour of staying in the EU.
The question of public policy and morality
When considering the applicant’s subsequent appeal, EUIPO’s Board of Appeal (BoA) explained that a trademark could be considered immoral if it was “directly contrary to the accepted principles of morality in the context of current attitudes which prevailed at the filing date of the contested mark”.
In this instance, BoA found that the term BREXIT had no moral connotations and that it concerned a sovereign political decision, taken in conformity with all legal and constitutional requirements. It also considered that refusal of the BREXIT trademark might be a breach of the fundamental right to freedom of expression, as set out by Article 11 of the Charter of Fundamental Rights of the EU and Article 10 of the Convention for the Protection of Human Rights and Fundamental Freedoms. Any limitation to this fundamental right must be provided for by law, must be necessary in a democratic society and must meet the objectives of general interest. In light of the above, BoA found that the word Brexit could not be deemed immoral:
“BREXIT is not a provocation or incitement to crime or disorder. Nor is it an emblem for terrorism or oppression or discrimination of any kind. Nor is it a synonym for social unrest. ‘BREXIT’ is not a byword for hate, sexism, racism or anything of the sort. Nor is it lewd or salacious. Of course, ‘BREXIT’ is a contentious and controversial topic. Nevertheless, when applied as a brand to electronic cigarettes, beer or fruit juices, the political and hotly controversial message of ‘BREXIT’ dissolves in humour. Its polemical meaning largely disappears when it is used as a brand indicating the commercial origin of those goods.”
In its decision, BoA also referred to a number of already existing national UK ‘BREXIT’ marks, such as ‘BREXIT THE MUSICAL’ and ‘English Brexit Tea’. If the term BREXIT did fall foul of public policy or morality, the acceptance of these trademarks would be odd, especially since the impact of BREXIT is likely to be more intense in the UK compared to other parts of the EU.
The distinctiveness hurdle
To be eligible for trademark protection, a sign must be capable of identifying the commercial origin of the branded goods or services, thus enabling the relevant public to distinguish those goods or services from those of another business (GretagMacbeth v OHIM). When considering whether the word ‘BREXIT’ fulfilled this criteria, BoA noted that the term ‘BREXIT’ is not laudatory; it is not a promotional formula such as the slogan ‘made in Britain’ for example. BoA also found the term to be a memorable and fancy combination of words with a playful take on the words ‘Britain’ and ‘exit’, commenting that it creates a “striking and surprising impression on the consumer”; in other words, it has distinctive character. The appeal was successful as a result.