Dr Stephen James writes again for Ward Trade Marks. Stephen is a past president of CITMA, and a leading practitioner with almost 40 years’ experience in UK and EU trade mark law.
This time he reviews another very interesting UK IPO case where the applicant applied to register Brexitas a word mark in class 32 for beer and brewery products. As a result, his trade mark application was opposed. Was the application a ‘beers all round’ success or rather a ‘too cloudy and bitter’ failure? Read on to see…
This case of trade mark opposition all stems around one word – Brexit. It was coined in 2012, according to the Oxford English Dictionary, to describe the United Kingdom’s departure from the European Union. The word came into prominence during the ill-fated EU referendum campaign in May and June 2016. A campaign that led eventually to a narrow vote by the UK electorate in favour of Brexit. That vote took place on 23 June 2016. The result of the referendum was announced on the following day. Whilst some Britons took to dancing in the street, and others took to their beds hoping that it was all a bad dream, a few had their eye on commercial opportunities.
Application for the Brexit trade mark
On 25 June 2016, a Mr John Brewster filed a UK trade mark application. It was for the word Brexit, claiming a range of class 32 goods including beer and brewery products, as well as non-alcoholic beverages.
It appears that the application was initially accepted by the UK Trade Mark Office> However, subsequently, and prior to publication, a non-distinctiveness trade mark opposition was raised under section 3(1)(b) of the Trade Marks Act 1994. The late objection was stated in the following terms:
“… The mark, consists of the term Brexit, which has now firmly entered into the common language and is widely understood to mean the UK’s exit from the EU. Since, especially, the referendum, the term signifies an important and ongoing event in the history of the UK. The relevant public will, therefore, see the term Brexit as being commemorative and nothing more.”
At a hearing to discuss this objection, the applicant’s arguments in favour of acceptance were rejected and section 3(1)(b) refusal was maintained. Mr Brewster appealed to the Appointed Person (Mr James Mellor QC).
The Appointed Person ‘wasn’t for turning’…
Before the Appointed Person, Mr Brewster first pointed to a number of UK trade mark applications for Brexit that had already been accepted (and registered) by the UK Trade Mark Office. This “state of the register” argument never works, even though, in some cases, the state of the register is so compelling that it should shame the Tribunal into withdrawing an objection. Unfortunately, in the present case, Mr Mellor followed the normal course and rejected the applicant’s state of the register argument; each case had to be considered on its own merits, etc, etc. Just for the record, although a number of UK trade mark applications for Brexit in the food and drink classes (29, 30, 32 and 33) have been refused, the UK office has accepted and registered Brexit for certain goods and services in classes 3, 9, 16, 21, 25, 28, 29, 30, 35, 41 and 44, including toilet water, computer software for games, cups and mugs, clothing, milk and coffee.
Mr Brewster also argued that similar “commemorative” marks, such as Trafalgar and Waterloo, had already been accepted by the UK office for beer. Again, this argument was to no avail. According to the Hearing Officer, these were historic events and would not be seen as descriptive for beer. By contrast, Brexit was a current event and should be treated differently. This reasoning was approved by Mr. Mellor.
As an aside, an even better example than Trafalgar and Waterloo might have been the numerous UK trade mark applications that were accepted and registered during the 1990s for the trade mark Millennium (and various misspellings), including an application for Millenium for wines, spirits and liqueurs. Having said that, once a Hearing Officer (or Appointed Person) has decided to reject a mark, in this case, Brexit, experience suggests that no evidence, regarding the registration of highly relevant trade marks, will shift that view.
Meanwhile over at the EUIPO
Mr Brewster then raised what he must have thought would be a killer argument against the trade mark opposition. Down in Alicante, the European Trade Mark Office (EUIPO) had accepted an EU trade mark application for Brexit that covered goods in classes 5, 32 and 34 including energy drinks and beer. This EUTM application filed by a UK company, Brexit Drinks Ltd, on 8 July 2016 (that is, shortly after Mr. Brewster’s UK trade mark application), had initially been rejected by the EUIPO on the following grounds:
- Non-distinctiveness (Article 7(1)(b)) of the EU Trade Mark Regulation); and
- Registration of the mark would be contrary to public policy or morality (Art 7(1)(f)). Here the Examiner maintained that registering Brexit as an EUTM would be either illegal or offensive or both.
Brexit Drinks appealed against these two objections, and as Mr Brewster pointed out, the Second Board of Appeal annulled both of them (Case R2244/2016–2). As far as the objection raised under Art 7(1)(f) was concerned, the Board was particularly persuaded by the existence of UK trade mark registrations for Brexit. They reasoned that, if the registration of Brexit fell foul of public policy or the basic norms of society, the UK Trade Mark Office would hardly be granting rights in the mark. Since they were (granting such rights), the EUIPO should follow suit. The Board of Appeal therefore overturned the Examiner’s Art 7(1)(f) objection.
The Second Board of Appeal ‘was for
Turning to the question of distinctiveness, the Second Board had no difficulty in finding the required level of distinctive character. According to the Board:
“Firstly, the mark is not only ‘memorable’, but highly so. Consumers of, inter alia, energy drinks or cigarettes bearing the ‘BREXIT’ mark, would have no problem at all in avoiding or repeating the purchase on future occasions…
“Secondly, the mark is not laudatory. It does not inform the relevant public that the goods represent an advantage in terms of quality with respect to competing goods offered by other traders. It is not a promotional formula…On this point, ‘BREXIT’ must not be confused with slogans such as ‘made in Britain’, which do indeed consist of promotional signs. However, ‘BREXIT’ makes no such laudatory claim.
“Thirdly, ‘BREXIT’ is invented, coined and playful. It fuses the words ‘Britain’ and ‘exit’ in a memorable and fanciful way. Although its high index of imaginativeness in relation to the goods in question is not even required in order to have the minimum level of distinctiveness…, it nevertheless creates a striking and surprising impression on the consumer.
“Fourthly, the Courts have held that the distinctive character of a mark must be assessed by reference to the goods and secondly by the perception of the relevant public…Clearly, ‘BREXIT’ conveys no information about the goods or their qualities; nor does it convey any descriptive laudatory message. ‘BREXIT’ on e.g. vegetable juices or vitamin drinks says nothing about the product, or its origin, or its characteristics. Nor is the mark remotely commonplace in respect of the goods in question.
“In conclusion, no good reasons have been put forward as to why ‘BREXIT’, which denotes a high-level political decision, cannot distinguish the applicant’s products from others which have another origin…”
For the above reasons, the Second Board overturned both of the absolute grounds objections raised by the Examiner and allowed Brexit Drinks’ EUTM application for Brexit to proceed.
UK trade mark appeal practice – a touch of bad case law?
Because of the unfortunate way that trade mark appeal practice has developed in the UK, based, in the writer’s view, on bad case law, the Appointed Person only occasionally overturns a trade mark opposition decision made by the UK Trade Mark Office. It was therefore always unlikely that Mr. Mellor would side with the EU Board of Appeal rather than the UK Hearing Officer on the question of distinctiveness. He did not do so. In fact, he set out six pages of legal argument as to why the reasoning of the Board of Appeal was not persuasive. This forensic examination could, however, be essentially boiled down to just one point. The Board of Appeal had not considered whether or not a Brexit beer (or similar) would be seen as merely commemorative of the event. Some might see that as an understandable oversight.
Be that as it may, this omission by the Board proved fatal, according to the Appointed Person, to Mr Brewster’s request for a consistent approach between the UK Trade Mark Office and the Board of Appeal. Mr Mellor, therefore, rejected Mr Brewster’s arguments in favour of registration based on the Second Board of Appeal’s decision. In doing so, Mr Mellor went on to reject the UK applicant’s appeal and, with it, his UK trade mark application for Brexit in class 32.
So, here, on the face of it, is a perfect example of the UK exercising its sovereignty and taking back control. The plucky UK Hearing Officer has seen off the mighty EU dragon (in the form of the Board of Appeal).
An ironic twist
Life is full of ironies, however. In rejecting the UK trade mark application (for Brexit in class 32) that was filed by a British individual, John Brewster, an application that had been relied upon by Mr. Brewster to oppose the later filed Brexit Drinks owned EUTM application (for Brexit in classes 5, 32 and 34), the UK authorities have ensured that the British individual has not only lost his earlier UK right but has also, as a result, had to withdraw his EUTM opposition. Okay, one might say, that is extremely unfair on Mr Brewster, which it is, but at least the beneficiary is a British company (Brexit Drinks). Here’s the twist though. Brexit Drinks is reported by the Manchester Evening News to be run by two Polish immigrants to the UK, Pawel Tumilowicz and Mariusz Majchrzak. Indeed, the two Eastern European entrepreneurs appear to have successfully launched their Brexit Energy Drink in 2016 and it remains on sale, see the website www.brexitdrink.com
Feel like commemorating Brexit? Have an energy drink!
Trade markopposition decision making is entirely subjective. There may be a body of law and case law (often conflicting), but rulings on distinctiveness and similarity of marks, for example, are essentially no more than personal opinions. So, for what it’s worth, the writer’s view on the Brexit Energy Drink that is being sold by Brexit Drinks is that it has the look and feel of a branded product rather than a commemorative product.
Further, the nature of the product, an energy drink, would seem to be an odd choice to commemorate a seismic, political event, such as Brexit. Would a customer really go into a shop and ask “Do you have any Brexit energy drinks? I feel like commemorating Britain’s exit from the EU”?
On the balance of probabilities, I would say that such a thought process would be unlikely. In the case of energy drinks (in class 32) therefore, it is submitted that the Board of Appeal was right and the UK Trade Mark Office was wrong on the issue of registering the trade mark Brexit.
Dr Stephen James
Ward Trade Marks
Ward Trade Marks conducts contentious trade mark proceedings before the UK and the EU IPO. If you need more information on opposing a trade mark application or defending an opposition: