CJEU and General Court clash over questions of morality and the registration of FACK JU GÖHTE as a trade mark
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Background
The application was originally refused by the EUIPO under Article 7(1)(f) of Regulation No 207/2009 (the EUTMR), which provides that a trade mark shall not be registered if it is "contrary to public policy or to accepted principles of morality". The EUIPO examiner considered that the mark was "intrinsically vulgar and therefore offensive", which made it "contrary to accepted principles of morality". Following appeals, the refusal was upheld by both the Board of Appeal and the General Court. The applicant, Constantin Film, appealed again to the Court of Justice of the European Union (CJEU).
CJEU ruling
The CJEU held the appeal to be well founded on the basis that the EUIPO and, subsequently, the General Court had not applied Article 7(1)(f) correctly. In particular, the General Court had conducted its assessment on a purely theoretical basis and failed to take into account social context and Constantin Film's evidence that the German Speaking public did not find the mark offensive. This evidence included the vast success of the film, which was seen by over 7 million people without any apparent offense being taken, as well as the fact that the film was rated acceptable for young people (12+), and had been used for educational purposed, including by the Goethe Institute.Taking into account the above, the CJEU concluded that despite the assimilation of the term "fack ju" to the English phrase "fuck you", the title of the film was not perceived as morally unacceptable by the German-speaking public at large. This was in part because the perception of that English phrase by the German-speaking public is not necessarily the same as the perception thereof by the English-speaking public, even if it is well known to the German-speaking public and the latter knows its meaning, since sensitivity in the mother tongue may be greater than in a foreign language.
The CJEU also made the general point that to breach Art 7(1)(f) it is not sufficient for the sign concerned to be regarded as being in bad taste. It must be perceived as contrary to the fundamental moral values and standards of society as they exist at that time. Furthermore, values and norms, which are likely to change over time and vary in space, should be determined according to the social consensus prevailing in that society at the time of the assessment. Account is to be taken of the social context, including, where appropriate, the cultural, religious or philosophical diversities that characterise it, in order to assess objectively what that society considers to be morally acceptable at that time. Finally, the CJEU noted that the right to freedom of expression (Article 11 of the Charter of Fundamental Rights of the European Union) must, be taken into account when applying Article 7(1)(f).
Comment
The take away lessons from this case are firstly that context is important in determining whether or not a trade mark offends accepted principles of morality, and secondly it appears that there is a relatively high threshold for EUTMs, for example, other registered EUTMS include FUCKING HELL for beer and FUCK WINTER for clothing. In contrast, the UK Intellectual Property Office applies what appears to be a lower threshold and has refused applications for FIT AS FUCK and FOOK (on the basis it is a phonetic equivalent to "fuck" in some regional dialects).The EUIPO must now give a fresh decision on Constantin Film's application to register this controversial mark. Watch this space!