by Alina Trapova
EUIPO’s Boards of Appeal allowed the trade mark “BREXIT” to be registered for, among other things, energy drinks and electronic cigarettes (R-2244/2016-2, decision of 28 June 2017).
Initially, the trade mark examiner refused the application on the grounds of morality/public policy (Article 7(1)(f) EUTMR), as well as lack of distinctive character (Article 7(1)(b) EUTMR). Surprisingly, considering the rarity of such decisions, larger emphasis was placed on the morality and public policy ground. According to the examiner, if allowed to register the trade mark would have an offensive impact on the sensitivity of the average European consumer and particularly on the 48% of the British population that voted “REMAIN” in the UK referendum in June 2016.
The Second Board of Appeal overturned the examiner’s decision and concluded that “BREXIT” is indeed a valid trade mark in respect of both cited absolute grounds for refusal.
- Article 7(1)(f) EUTMR
Decisions on this ground are relatively rare. The moral principles to be safeguarded here are assessed in the context of current attitudes prevailing at the time of the filing of the trade mark. Hence, the Board appreciates that moral principles are not set in stone.
The Board then went on to analyse the meaning of the term “BREXIT”. It did so by referring to concepts familiar to (nearly) all European citizens – “referendum”, “leave”, “remain”, “51.9%” and “30 million people voting”. Shortly afterwards it concluded that “BREXIT” embodies a sovereign political decision, entirely taken in conformity with the Lisbon Treaty and the UK’s constitutional requirements. This was logically supported by references to the UK Supreme Court’s judgment of 24 January 2017, the European Union (Notification of Withdrawal) Bill 2017, as well as Article 50 of the Lisbon Treaty. As a result, “BREXIT” bears no moral connotations whatsoever.
Contextualising its decision by reference to general legal principles and not only EUTM legal pillars, the Board turns next to the notion of freedom of expression. Accordingly, the freedom of expression, essential in a democratic society, is not unlimited, says the Board, and is subject to certain restrictions, “construed strictly”, whereby the need for such exceptions should be “established convincingly”. Contrary to the examiner, the Board states that trade marks such as “BREXIT” may not be barred merely because the ideas themselves may “offend, shock or disturb” a significant part of the public, such as those in favour of staying in the EU. The Board acknowledges that a certain proportion of the British public may have been upset about the referendum outcome, but “being upset does not constitute offense”. Hence, even these strong opinions in favour of BREXIT are protected speech.
When combined with the goods applied for (electronic cigarettes, energy drinks, fruit juices, etc.) the mark “BREXIT” provokes humour and its political connotation fades when the sign is used to indicate commercial origin.
In addition, some UK “BREXIT” marks (“BREXIT THE MUSICAL” in Class 41, “English Brexit Tea” in Classes 4 and 30, “BREXIT” in Classes 9, 21, 25 and 35) have been cited and the Board comes down to the conclusion that it would be “odd that these marks were allowed on the register if the word fell foul of public policy or the basic norms of society”. What strikes here is that registration of national marks was accepted as a convincing point in favour of registration. Usually, at this stage the Board highlights in its reasoning the EUTM system’s autonomous character and the standard principle that the legality of trade mark applications is only assessed against the EUTMR. Relying on national authorities when dealing with EUTMs has also relatively recently been criticised by the General Court (see Winnetou, T-501/13, see here). Anyhow, the Board had already thoroughly reasoned above based on both objective morality principles, as well as freedom of expression provisions. Therefore, this little omission could be easily excused.
- Article 7(1)(b) EUTMR
As to the lack of distinctive character, the Board highlights that “BREXT” is not to be equated to “Made in Britain”, which is indeed laudatory and hence, not a valid trade mark. In relation to the goods applied for,“BREXIT” conveys no information about their quality. Therefore, it is not against the absolute ground of Article 7(1)(b).
“BREXIT” trade mark applications were bound to come along, so this decision is of little surprise. What strikes though is the applicant – it is not Nigel Farage, nor any of the LEAVE campaigners. Quite the opposite – it is Pawel Tumilowicz, owner of Brexit drinks Ltd. and a polish entrepreneur in the UK., who happens to have come up with the brand “for a laugh”.
Alina Trapova, PhD Candidate, Bocconi University