The issue of offensive trade marks has been in the news quite a bit of late. Now, the European trade mark authorities have considered whether Brexit, the term used to describe the UK's departure from the European Union, is a trade mark that might offend.

It might seem like an unlikely trade mark, but clearly some people think that Brexit works as an indicator of commercial origin. When a company filed an application to register an EU trade mark for Brexit in respect of a range of products, including non-alcoholic drinks, beers and electronic cigarettes, two objections were raised. One was that Brexit isn't distinctive. The other was that Brexit offends public order or morality.

The non-distinctiveness objection did not cause any major difficulties, with the Board of Appeal ("BOA") holding that as the word isn't laudatory and, as it's seemingly a combination of the words "Britain" and "exit", it passes the distinctiveness test. The BOA said that it creates a "striking and surprising impression on the consumer".

The second objection was more difficult, but the BOA finally came to the conclusion that there was no reason to refuse the application. It made various points. Firstly, it said that a refusal might contravene the right to freedom of expression that's protected by European law. Secondly, it said that the fact that the UK trade mark office has accepted various Brexit trade marks is relevant because people in the UK are most likely to be offended by the word – applications for English Brexit Tea and Brexit the Musical have apparently been allowed.

The most interesting point was that the BOA felt that the word Brexit is not one that might provoke hatred, disorder or the like. It made some interesting comments here. It accepted that Brexit is "a contentious and controversial topic" but, it went on to say that the mere fact that something is controversial does not make it offensive or contrary to public policy. It said that Brexit is not "a provocation or incitement to crime or disorder". It is not "an emblem for ... discrimination of any kind". It is not a "synonym for social unrest". It is not a "byword for hate ... racism or anything of the sort."

The BOA then considered possible trade mark usage and said this: "When applied as a brand to electronic cigarettes, beer or fruit juices, the political and hotly controversial message of 'Brexit' dissolves in humour ... its polemical meaning largely disappears when it is used as a brand indicating the commercial origin of those goods."

The decision seems to be in line with recent developments. The US Supreme Court recently dealt with the issue of offensive trade marks in the case of Matal v Tam. The issue there was whether Tam, the founder of an Asian-American rock group called The Slants, could register the band's name, a name that is obviously derogatory of people of Asian descent. The application had been refused by the US office under section 2(a) of the Lanham Act, which prohibits the registration of trade marks that comprise "immoral, deceptive, or scandalous matter, or matter which may disparage ... persons ... institutions, beliefs or national symbols, or bring them into contempt or disrepute."

The court held that Tam, an American of Asian descent who said that he wanted to reclaim the stereotype, was entitled to registration. In fact, the court held that the section of the Lanham Act violates the First Amendment's Free Speech clause, which prohibits government from "abridging the freedom of speech". The court memorably said this: "The proudest boast of our free speech jurisprudence is that we protect the freedom to express the thought we hate."

It's interesting to speculate on how something like Brexit would be dealt with in South Africa. Brexit isn't a particularly emotive issue in South Africa, but what about terms that are much closer to home like state capture or white monopoly capital? Could they be registered as trade marks? In South Africa, freedom of expression is a much-treasured constitutional right, and in the context of trade marks, the Constitutional Court famously held that an individual who used the Black Label trade mark on T-shirts with a political message was not infringing the registered trade mark. When it comes to trade mark registration, section 10(12) of the Trade Marks Act, 1993 says that the registrar must refuse registration of any trade mark, the use of which would be "contrary to law, be contra bonos mores, or be likely to give offence to any class of persons."

It's interesting to note that when it comes to domain names, the relevant legislation is a little more explicit, talking of an "offensive registration", which is something that "may be indicated if the domain name advocates hatred that is based on race, ethnicity, gender or religion and/or that constitutes incitement to cause harm." One can't help thinking that an application to register a politically charged term as a trade mark would be refused in South Africa, especially if it is one that might fuel unrest or racial tension.

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