2019年5月1日

BREXIT all around

The EUIPO has not only been confronted with the impact of BREXIT procedurally but also has been faced with several trade mark applications including the word 'BREXIT'.

Recently, the Grand Board of Appeal of the EUIPO has considered a trade mark application for a stylised version of the word 'BREXIT' for energy drinks containing caffeine and for beer (Class 32).

The reasons for the remittal to the Grand Board of Appeal was a previous decision by the Second Board of Appeal which concluded that there were no absolute grounds of refusal for the word mark 'BREXIT' for goods in Classes 5, 3, 34 as well as national decisions about this word with varying outcomes.

The Grand Board assessed the application on two grounds: First, it discussed whether the application was contrary to the established principles of morality and public policy and secondly whether it possesses the required distinctive character.

When elaborating first of all on the meaning of the word BREXIT, the Grand Board also touched upon the enormous consequences of BREXIT stating that:'

"The United Kingdom's BREXIT will have important legislative, economic, and social repercussions at all levels for all the Member States for many years to come" (unofficial translation).

In this particular context, the relevant public, which may display a low level of attention when faced with the word 'BREXIT', includes also the public to whom the goods are not directly addressed.

When assessing whether the sign applied for was actually contrary to morality and public policy, the Grand Board restated that the standard does not depend on the perception of the part of the relevant public who does not find anything shocking nor on the perception of the part of the public that may be very easily offended.

Instead, the standards of a reasonable person with average sensitivity and tolerance thresholds is crucial when determining whether an application can be rejected.

The Grand Board disagreed with the assessment of the Examiner that the relevant public would be 'deeply offended' when confronted with the registration of the sign applied for. The Grand Board argued that the word BREXIT did not bear any moral connotation. The Grand Board added:

"To the extent that a part of the public in the United Kingdom may have been upset by the referendum result and the undesired consequences of the political process; this is just one natural result for controversial decisions taken democratically. Being upset about a political development does not constitute offence. The word 'BREXIT' is not repugnant from a moral point of view, merely because part of the public does not like the idea of it' (unofficial translation).

Concerning the distinctive character, the Grand Board dismissed the Applicant's argument that the sign applied, at its time of registration, referred to an unknown new word. Rather, the word 'BREXIT' would only be associated with a political and historical event by the relevant public.

The Grand Board noted that a sign may only acquire distinctiveness when used in a trade context. The figurative elements consisting of stylized letters and a background evoking the Union Jack flag did not render the sign distinctive either.

The Grand Board also referred to national decisions refusing signs containing the element BREXIT which confirmed its view.

Comments

This decision is particularly interesting for three reasons.

First, by referring this case to the Grand Board, the Boards of Appeal attempt to streamline the (previously inconsistent) approach taken regarding applications including the word 'BREXIT'.

Contrary to the Second Board of Appeal, EUIPO's Examination Division has previously refused several applications containing BREXIT seeking registration for goods such as alcoholic beverages (Class 33), metal (Class 6), software or services eg legal services (Class 45).

Second, as also pointed out by the Grand Board, the word 'BREXIT' as an ongoing political event is currently highly significant. Although the Grand Board did not assess the descriptiveness of 'BREXIT' within the meaning of Art. 7(1)(c) EUTMR, it follows from its decision that BREXIT constitutes a descriptive term. As a rule, a term descriptive for the goods and services applied for is not distinctive.

Lastly, this decision is interesting in terms of the application of standards of morality and public policy. By overturning the Examiner's decision at this point, it reflects that this is a rather sensitive political event with a high impact.

Nevertheless, this is insufficient to be regarded as 'deeply offensive' and to pass the threshold of Art. 7(1) (f) EUTMR, as this concerns a decision taken democratically.

Leading examples of trade mark applications which were rejected on this ground, however, include 'HIJOPUTA' and 'Fack Ju Göhte' (still pending with the Court of Justice).

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