“BREXIT” passes EU trademark test

By Myrthe Pardoen, Competence Center, Novagraaf, Amsterdam, Netherlands

In September 2017, the European Commission published a position paper on intellectual property (IP) rights after Brexit, setting out its ideas on how it wants to see unitary IP rights handled after the United Kingdom departs from the European Union (EU). But this wasn’t the only Brexit story to interest IP practitioners at the time: the EU Intellectual Property Office (EUIPO) also issued its judgment in an appeal case related to the question whether the term “BREXIT” is 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 (which includes 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 the EUIPO on the absolute grounds that it was “devoid of distinctive character” (Article 7(1)(b) of EU Trade Mark Regulation (EU)2017/1001) and “contrary to public policy or to accepted principles of morality” (Article 7(1)(f)).

In the EUIPO examiner’s view, the term BREXIT was not eligible for trademark protection because European citizens would be too familiar with it, 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, especially if it were allowed for products such as energy drinks and (e-)cigarettes. Here, the examiner referred to the 48 percent of Britons who had voted in favor of staying in the EU.

The question of public policy and morality

Considering the applicant’s subsequent appeal, the EUIPO’s Board of Appeal 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, the Board of Appeal found that the term BREXIT had no moral connotation and 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 in Article 11 of the Charter of Fundamental Rights of the EU and Article 10 of the European 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, the Board of Appeal 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, the Board of Appeal also referred to a number of already-existing national UK BREXIT-related 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 criterion, the Board of Appeal noted that the term BREXIT is not laudatory; it is not a promotional formula such as the slogan “made in Britain,” for example. The Board of Appeal 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. In consequence, the appeal was successful.