Offended by Brexit? Brexit Drinks v EUIPO

The examiner rejected the application in its entirety on the grounds that it was devoid of distinctive character under Article 7(1)(b) EUTMR and contrary to public policy or to accepted principles of morality under Article 7(1)(f) EUTMR.

The examiner reasoned that:

• All European citizens will be familiar with the term BREXIT. Brexit bears serious consequences not just for Britain but for European society as a whole.
• Article 7(1)(f) does not require the sign per se be illegal or offensive, but that granting a monopoly of the sign would be perceived as such. EU citizens would be deeply offended if the mark BREXIT was registered and used as a mere ‘product identifier’ and not for its original purpose.
• The mark would have an offensive impact on the sensitivity of the average European consumer, in particular for those who voted remain. It represents an attempt to play down the importance of Brexit as a momentous event in modern European history.
• Through intensive use of the mark BREXIT in social and world media, it will merely be seen as a motto for the withdrawal of the UK from the EU and not as an indicator of trade origin of the goods applied for.

Appeal

The applicant appealed the examiner’s final decision to the EUIPO Board of Appeal, claiming inter alia that there are no grounds for believing that BREXIT is a ‘sensitive’ subject for British consumers; the UKIPO has already registered various BREXIT trade marks; the mark BREXIT does not conflict with any basic European values and that the mark is not descriptive for the goods in question.

Public policy and morality

The Board of Appeal first examined the Article 7(1)(f) EUTMR ground for rejection. After taking into account the context in which the term BREXIT was coined, it concluded that the term embodies a sovereign political decision and has no moral connotations. The examiner had not provided any evidence to support her finding that the mark would be felt to be offensive by the average European consumer, and in particular by those who voted remain. The Board of Appeal went on to find that the refusal of registration under this ground might be contrary to freedom of expression.

Freedom of expression

Article 11 of the EU Charter of Fundamental Rights, which corresponds to Article 10 of the Convention for the Protection of Human Rights and Fundamental Freedoms (ECHR) provides that “everyone has the right to freedom of expression”. Article 10(2) ECHR provides: “The exercise of these freedoms, since it carries with it duties and responsibilities, may be subject to such … restrictions …as are prescribed by law and are necessary in a democratic society..., for the prevention of disorder or crime, for the protection of ... morals.”

The Board of Appeal noted that it is clear from the case law that the registration of marks such as BREXIT may not be refused merely because the ideas themselves may “offend, shock or disturb” a significant part of the relevant public, being in the present case those who voted remain. The case law dictates that any restrictions to freedom of expression must be established convincingly, however the examiner in the contested decision had not given any evidence of a ‘pressing social need’ and therefore had not justified the need for a restriction on freedom of expression.

It was found that whilst the EU referendum result and its consequences may have upset a part of the UK public, being upset does not constitute offence. The fundamental right to freedom of expression protects strong opinions, even if they may offend a part of the public. Furthermore, when used in relation to the goods applied for, the “political and hotly controversial message of ‘BREXIT’ dissolves in humour”. The Board of Appeal therefore concluded that the term BREXIT could not be found to be immoral.

The Board of Appeal stated that the “patronizing approach evident in the contested decision is out of place”.

It is irrelevant whether Brexit turns out to be a good or bad decision; a perfectly lawful decision taken by the UK government cannot be attacked on the grounds that it is contrary to public policy or to accepted principles of morality.

Registered UK trade marks

It was noted by the Board of Appeal that the UKIPO has registered various marks consisting of or containing the term BREXIT, including:

• “BREXIT THE MUSICAL” for theatre services in class 41;
• “English Brexit Tea” for goods including tea in classes 4 and 30;
• “BREXIT BLUE” for cheese products in class 29;
• “BREXIT” for goods and services including clothing, footwear, headgear in classes 9, 21, 25 and 35.

It was held that, given that the emotional impact of Brexit is presumably greater in the UK, it would be odd if the UKIPO had accepted the above trade marks if the term BREXIT did indeed fall foul of public policy or the basic norms of society.

The contested decision was therefore annulled in relation to the Article 7(1)(f) ground for rejection.

Distinctiveness

In relation to the Article 7(1)(b) ground for rejection, the Board of Appeal found that the mark was highly memorable when used in relation to the goods applied for; made no laudatory claim; was invented, coined and playful; and conveyed no information about the goods or their qualities. It was held that the mark BREXIT was in fact distinctive for the goods applied for. The contested decision was therefore also annulled in relation to the Article 7(1)(b) ground for rejection.

Conclusion

The appeal was successful and the contested decision was annulled in its entirety.

In short

It is interesting that the Board of Appeal took the registered UK trade marks into account in their assessment of the Article 7(1)(f) ground for rejection.

The EUIPO usually dismisses the argument that the previous acceptance of identical or similar marks should be persuasive in allowing acceptance of an application, stating that the EUIPO is not bound by the UKIPO’s decisions or its own decisions.

Whilst the facts of the present case are unique, the decision shows that the previous acceptance of similar or identical marks may in particular circumstances be a relevant factor.

Case details at a glance

Jurisdiction: European Union
Decision level: EUIPO Board of Appeal
Parties: Brexit Drinks Ltd v EUIPO
Citation: R 2244/2016-2
Date: 28 June 2017
Decision: http://dycip.com/r22442016-2