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Can "Fack Ju Göhte" be registered as an EU trade mark after all?

11.07.2019

In his conclusions of 2 July 2019 in the pending case C-240/18 P before the Court of Justice of the European Union (CJEU), the Advocate General Michal Bobek considered the refusal to register the mark ‘Fack Ju Göhte’ as an EU trade mark (EUTM), upheld by all previous instances.

As reported (see our article here), the General Court of the European Union (GC) ruled on 24 January 2018 in the matter T-69/17 that ‘Fack Ju Göhte’ was contrary to accepted principles of morality, since it was not only in bad taste but also an offensive and vulgar insult.

According to the GC, the relevant public, namely German-speaking general consumers within the European Union, perceived ‘fack ju’ to be identical to the English words ‘fuck you’. The additional component ‘Göhte’ posthumously insulted Johann Wolfgang von Goethe in a derogatory and vulgar manner, and was also spelled incorrectly, and could in no way distract from the offensive character of the insult ‘fack ju’, which was contrary to accepted principles of morality. Regarding the (harmless) goods and services concerned (for everyday use and consumption), the consumer should not have to expect and/or be prepared to be confronted with such an obscenity upon purchase. The success of the film ‘Fack Ju Göhte’ does not mean that the relevant public would not be shocked by the registered mark. Even the fact that the mark ‘Die Wanderhure’ (‘The Whore’) was approved by the European Union Intellectual Property Office (EUIPO) as an EUTM is irrelevant, since this information describes the contents of the film of the same name and is also much less vulgar than ‘Fack Ju Göhte’. The argument put forward by the owner of the EUTM, Constantin Film Produktion GmbH (Constantin Film) that the mark is understood as a joke about the frustration of the pupils with school, was countered by the GC as follows: ‘in the field of art, culture and literature, there is a permanent concern about preserving freedom of expression that does not exist in the field of trade marks.’

Ultimately, the Advocate General suggests that the court set aside the judgment of the GC and annul the Decision of the Fifth Board of Appeal of the EUIPO.

The Advocate General first considers the question of what role the right to freedom of expression plays in trade mark law. In this respect he refers to the Charter of Fundamental Rights of the European Union and the fundamental rights guaranteed therein, which extend to each action or omission of the bodies and institutions of the European Union, as well as recital 21 recital of Regulation 2017/1001, which recognises this right. Further, the commercial nature of an activity is no reason to limit or even exclude fundamental rights protection. Finally, this legal concept is also in line with the case law to date of the GC and the decision-making practice of the EUIPO. In the opinion of the Advocate General, the above comment by the GC is to be understood in such a way that contrary to the fields of arts, culture, and literature, the weight to be given to freedom of expression in the area of trade mark law may be somewhat different, perhaps slightly lighter, in the overall balancing of the rights and interests present.

The Advocate General then turns to the distinction between the terms of public policy and accepted good morality.

Unlike in the judgment in question, it does not follow from the fact that these two terms can overlap in some cases that there is no obligation to distinguish between the two. It is correct that article 7(1)(f) of Regulation No 207/2009 (now Article 7(1)(f) of Regulation 2017/1001) contains a restriction concerning the marks which can enjoy the special protection granted by a trade mark. But its purpose is not to prevent the commercial use of refuses signs altogether. In that respect the EUIPO assumes a role in the protection of public policy and accepted good morality, but this is not a key role or predominant role. According to the opinion of the Advocate General, Article 7(1)(f) of Regulation No 207/2009 and/or 2017/1001 essentially acts as a safety net by setting limits on the realisation of other aims. But it is not an end in itself.

According to the GC, it is not obliged to examine the terms of public policy and accepted good morality separately. However, in practice the examination by the EUIPO occasionally extends to both terms at the same time (e.g. in the case of the EUTMs ‘BIN LADIN’, ‘BREXIT’, ‘Screw You’ or ‘ATATURK’), sometimes focused more, or even exclusively, on the public policy limb (e.g. in the EUTMs ‘MECHANICAL APARTHEID’, ‘OSHO’ or ) or is conducted in the light of the accepted principles of morality (e.g. in the case of the EUTMs  or ‘FUCK CANCER’). 

The Advocate General continues that ‘public policy’ is a normative vision of values and goals, defined by the relevant public authority, to be pursued now and in the future. ‘Accepted principles of morality’ refer, he said, to the values and convictions currently adhered to by a given society, set and enforced by the prevailing social consensus within that society at a given time. The key difference between the two concepts is how they are established and thus ascertained. Public policy is articulated from the top down, its content can be ascertained objectively. Accepted principles of morality, however, which are based on subjective values, require at least a certain empirical assessment of what the determining society (the public in question) regards at a certain time to be acceptable norms of conduct, he said. In light of this, the EUIPO, if it wanted to invoke accepted principles of morality as an absolute ground for refusal, must determine on the basis of the predominant perception among the public in question why a certain mark offends those principles in its opinion.

This did not happen in the present case, in the view of the Advocate General.

The EUIPO had defined the relevant public first of all as the general audience, thus not only pupils at secondary schools, but also people who may not have ever heard of the film and would be surprised when doing their weekly shopping to find a loaf of bread (class 30) on the shelf named ‘Fack Ju Göhte’. It is also the German-speaking audience which is relevant. It will not perceive the mark in the same way as English-speaking audiences, especially given the unusual transcription of a foreign-language insult.

In addition, the assessment of whether the sign complies with the accepted principles of morality cannot be carried out having regard solely and exclusively to the word sign, in isolation from the broader societal perception and context, if any evidence for such exists. In the present case, Constantin Film had argued, for example, that the film Fack Ju Göhte could be shown under that title and there were obviously no access restrictions for young people. Even if the classification and regulation of films in a Member State are subject to a different set of rules from EU trade mark law, the starting point of both assessments is the same relevant public and the review of morality and vulgarity with the same audience at the same or at a very similar time. The great success of the film in the German-speaking countries (obviously without being controversial because of its title) as well as the positive perception (also by its inclusion into the teaching programme of the Goethe Institute) made the requirements for justification stricter for the EUIPO if it wanted to depart from them. Since devising and ascertaining accepted principles of morality (as well as public policy) is hardly the primary role of the EUIPO, it is difficult to conceive of EUIPO having the mandate to suddenly start coining a robust vision of accepted principles of morality, cut loose from (or, rather, much more stringent than) the one apparently prevailing in the Member State(s) in question.

Finally, the Advocate General deals with the assertion by Constantin Film that the decision-making practice of the EUIPO – in particular given the decision in the case of ‘Die Wanderhure’ – is not coherent, which breaches the principles of equal treatment and sound administration. The Advocate General clarifies that coherent decision-making does not mean that the outcomes must be identical, nor does it mean immutability or inability to correct earlier errors or to make changes in approach and in interpretation. However, the EUIPO should adhere as far as possible to a coherent decision-making approach, such as in this case to the criteria and elements to be taken into account when assessing the terms in Article 7(1)(f) of Regulation No 207/2009 and/or 2017/1001 and how strictly or leniently these are applied. In technical procedural terms this means it is possible at any time to depart from the earlier approach during decision-making, but this departure is to be justified and explained coherently. In view of the similarities between the previous case of ‘Die Wanderhure’ and ‘Fack Ju Göhte’ the EUIPO would have had to state conclusively why it came to different results in these two cases, which it did not do, however.

This appeal is important in that it gives the CJEU the opportunity for the first time to specify the criteria for assessment of Article 7(1)(f) of Regulation No 207/2009 (now Article 7(1)(f) of Regulation 2017/1001). It also has the chance to define equal treatment and sound administration in more detail as well as the extent of the EUIPO’s duty to provide justification and to further explain the principles stated in the Puma decision (case C-564/16 P). The direction the Advocate General takes to distinguish between the terms ‘public policy and ‘accepted good morality’ seems quite sensible. It remains to be seen whether the CJEU follows this approach and whether it deals with the remaining issues as well.

Intellectual Property

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