John Ferdinand analyses the EU’s decision to twice block a “Brexit” trade mark
John Ferdinand
Partner
Marks & Clerk
As the Brexit saga rumbles on in Brussels and London, a recent decision from the EU Intellectual Property Office (EUIPO) reveals that Brexit in name, as well as nature, is causing issues for some.
It was recently reported that a trade mark application for a Brexit energy drink had been rejected by the EUIPO. The original grounds for refusal were that the ‘Brexit’ portmanteau would prove ‘offensive’ to EU citizens, adding it was not “distinctive” enough to be a trade mark. The decision was later challenged and, while a later ruling found the trade mark wouldn’t prove offensive, the original decision on distinctiveness was upheld. While the initial decision to refuse the application on moral and offensive grounds may find support in some quarters, it was a bizarre interpretation of the law and the grounds for refusal were rightly overturned. To decide otherwise would equate the word BREXIT with completely morally reprehensible language and terminology – such as racist or overtly offensive terms.
The decision to uphold the refusal of the application on the grounds of the use of BREXIT is a little more complicated. The general rule is, there’s no need for a word to be particularly inventive or original and there’s certainly no obvious connection between BREXIT and energy drinks. In these circumstances it’s generally the case that the first entity to seek registration should be allowed to do so. However, the EUIPO found that rather than see the mark BREXIT as a trade mark ora badge of commercial origin, the public would see the term purely as a reference to the political event and its use would be seen in a commemorative or thematic sense. This is akin to using references to well-known current or seasonal events, celebrity or well-known personality names to sell particular products based around those names and themes. In these circumstances the reasoning behind such objections is that the trade mark office should prevent one single entity from obtaining a monopoly on use of such terms and they should be free for anyone to use.
The same decision was reached in the UK in 2018 in relation to the same mark and goods and this shows there’s some rare consensus between the UK and EU on the meaning of BREXIT in this context. This case shows that if obtaining exclusive legal protection of trade marks is important to a business, be careful not to select marks that might be associated with a particular current event or theme.
