'Fack Ju Göhte' – not offensive and vulgar after all?

In its judgment in Case C-240/18 P handed down on 27 February 2020, the Court of Justice of the European Union (CJEU) now also dealt with ‘Fack Ju Göhte’. Following the opinion of the CJEU’s Advocate General (CJEU-AG) Michal Bobek on 2 July 2019 (we reported on this here), the CJEU sets aside both the judgment of the General Court (GC) of 24 January 2018 in Case T-69/17 (which we also reported on here) and the previous decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO). This means that the EUIPO has to decide again on the European trade mark (EUTM) ‘Fack Ju Göhte’, which was originally rejected.

Up to now, registration of the trade mark at issue, which Constantin Film Produktion GmbH (Constantin Film) applied for as an EUTM in 2015 for a variety of goods and services (perfumes, jewellery, stationery, clothing, toys, foodstuffs, telecommunication and educational services, etc.), was rejected at all instances. The grounds were that, in accordance with Article 7(1)(f) of the European Trade Mark Regulation (EUTMR), it infringed accepted principles of morality.

The CJEU has now rejected this.

Assessment by the CJEU

In its judgment, the CJEU starts by dealing with the concept of ‘principles of morality’ in very general terms. It says that they refer to fundamental moral values and standards to which a society adheres at a given time and which change over time and ‘vary in space’. They should be determined according to the social consensus prevailing in that society at the time of the assessment. In order to establish whether a mark is incompatible with these moral values and standards of society, the examination is to be based on the perception of a reasonable person with average thresholds of sensitivity and tolerance, taking into account the context in which the mark may be encountered and, where appropriate, the particular circumstances of the part of the European Union concerned.

The CJEU also points out that the examination of the mark cannot be confined to an abstract assessment of the mark applied for, or even of certain components of it. However, at the same time, it clarifies that this does not mean that, in the course of that examination, contextual elements capable of shedding light on how the relevant public perceives that mark could be disregarded. As the CJEU-AG has argued, those factors include the great success of the film of the same name amongst the German-speaking public at large and the fact that its title does not appear to have caused controversy, as well as the fact that the film was rated as suitable for young people and that the Goethe Institute uses it for educational purposes.

The CJEU also stated that, because those factors are capable of constituting an indication that the German-speaking public at large does not perceive ‘Fack Ju Göhte’ as morally unacceptable, the GC could not rely solely on the intrinsically vulgar character of “fuck you” without examining those factors or setting out conclusively the reasons why it considered, despite those factors, that the German-speaking public at large perceives that mark as running counter to the fundamental moral values and standards of society. Thus, the CJEU does not consider the mere statements made by the GC sufficient to satisfy those requirements of examination and reasoning. On the contrary, the CJEU states that the GC was required to ascertain that EUIPO had not infringed its obligation to carry out an ex officio examination of the facts. Finally, the CJEU concluded, the principle of freedom of expression, which is supported by recital 21 EUTMR, is to be observed when applying Article 7(1)(f) EUTMR.

CJEU judgment

In light of the above considerations, the CJEU makes clear that the title of a film can be applied as a decisive contextual factor for assessing infringement of accepted principles of morality, regardless of whether it reflects the content of the film or not. Although the success of a film does not in itself prove society’s acceptance of its title, it at least constitutes an indication of such acceptance, in the CJEU’s opinion.

Thus, the CJEU continues, all of these contextual factors consistently indicate that, despite the similarity of the words ‘fack ju’ to the English phrase ‘fuck you’, ‘Fack Ju Göhte’ was not perceived as morally unacceptable by the German-speaking public at large. According to the CJEU, it should also be noted in that connection that 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. Furthermore, the CJEU points out that the mark applied for does not consist of that English phrase as such but of its phonetic transcription in German, accompanied by the element ‘Göhte’

Under these circumstances, and in view of the fact that no concrete evidence has been plausibly put forward to explain why the German-speaking public at large will perceive ‘Fack Ju Göhte’ as going against the fundamental moral values and standards of society when it is used as a trade mark, even though that same public does not appear to have considered the title of the eponymous films to be contrary to accepted principles of morality, the CJEU finds that EUIPO has failed to demonstrate to the requisite legal standard that Article 7(1)(f) EUTMR precludes registration of the mark applied for. The decision is therefore to be annulled.

This decision is significant in that it specifies criteria for assessing Article 7(1)(f) EUTMR and the scope of EUIPO’s obligation to state reasons. However, the CJEU did not deal with the other pleas in law raised, i.e. an alleged breach of the principles of equal treatment, legal certainty and good administration. The finding that contextual factors are to be taken into consideration in assessing a trade mark’s suitability for registration is definitely a positive development. However, considering the unique contextual factors in this case, it is not to be expected that EUIPO will soon change its current practice of generally rejecting registration of trade marks with elements such as ‘fuck’ (or comparable terms).