“BREXIT” passes EU trademark test

• Author: Myrthe Pardoen
• Position: Competence Center, Novagraaf, Amsterdam, Netherlands

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...