Morality Tale – “Fack Ju Göhte” morally acceptable

ECJ has provisionally concluded the registration proceedings regarding EU-trademark application “Fack Ju Göhte” and decided – contrary to the previous instances – that the trademark “Fack Ju Göhte” is not contrary to accepted principles of morality (decision of ECJ dated February 27, 2020 – C-240/18P).

Background

Based on the outstanding audience success, Constantin Film Produktion GmbH intended to register the movie title “Fack Ju Göhte” as an EU-trademark with the European Union Intellectual Property Office (EUIPO). Not only the EUIPO, but also the Board of Appeal and the General Court (GC) refused registration of the mark due to absolute grounds. The refusal was based on Art. 7 (1) (f) European Union Trademark Regulation (EUTMR), governing that trademarks shall not be registered which are – amongst others things – contrary to accepted principles of morality.

The refusal was based on the fact that in German, “Fack ju” was known as a slang expression for the English “Fuck you” and “Göhte” would be equated with the writer Johann Wolfgang von Goethe, inter alia because of the 2013 German hit film “Fack ju Göhte”.

“Fack ju” would be understood by the German public as corresponding to the insult “Fick dich”. According to the Boards of Appeal of EUIPO in its decision of December 1, 2016, this insult would constitute an “utterly vulgar and indecent defamation”. This vulgar insult was used to express dislike in relation to another person. If translated literally it would feature a sexual connotation since it would be understood as a demand to have sexual intercourse with oneself. With the reference to “Göhte”, the well-respected and much venerated Goethe would be posthumously denigrated “in a derogative and vulgar manner”. This argumentation was confirmed by the decision of the General Court dated January 24, 2018.

This decision has now been set aside by the European Court of Justice (ECJ) with its decision of February 27, 2020, resulting in the consequence that EUIPO has to decide again about the registration of the EU-trademark application “Fack Ju Göhte”.

Reasons for decision presented by ECJ

First of all, ECJ has pointed out that the examination to be carried out cannot be confined to an abstract assessment of the mark applied for, or even of certain components of it (see No. 43). Instead, it must be established, in particular where an applicant has relied on factors that are liable to cast doubt on the fact that that mark is perceived by the relevant public as contrary to accepted principles of morality, that the use of that mark in the concrete and current social context would indeed be perceived by that public as being contrary to the fundamental moral values and standards of society.

Both EUIPO and the General Court did not sufficiently consider such factors which include the great success of the comedy of the same name amongst the German-speaking public at large, the fact that its title does not appear to have caused controversy, the fact that access to it by young people had been authorised and that the Goethe Institute —the cultural institute of the Federal Republic of Germany which is active worldwide and has the role, inter alia, of promoting knowledge of the German language — uses it for educational purposes.

Those factors are, a priori, capable of constituting an indication that the word sign “Fack Ju Göhte” is accepted by the public at large and is not contrary to accepted principles of morality.

ECJ has also pointed out that the perception of this 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. For the same reason, the German-speaking public does not also necessarily perceive the English phrase in the same way as it would perceive the German translation of it (see No. 68).

As a result, ECJ mainly criticized the lack of reason that the German-speaking public would perceive the applied mark “Fack Ju Göhte” as being contrary to accepted principles of morality, in particular against the background of the facts presented by the applicant as well as the fact that a foreign language will be perceived differently by a native speaker.

Based on these requirements, EUIPO now has to decide once again about the registration of the EU-trademark “Fack Ju Göhte”, namely, more than five years after the application was filed.

Good prospects for trademark applicants

The vague and meanwhile antiquated legal terms “public policy” or “accepted principles of morality” in Art. 7 (1) (f) EUTMR are subject of a certain subjectivity which means that the registration practices do not result in a certain stringency. To some extent, EUIPO has registered trademarks that have been refused by the national trademark offices as being contrary to accepted principles of morality and vice-versa.

ECJ has now set legally binding requirements for the interpretation of the accepted principles of morality which have to be considered by EUIPO and the national trademark offices. An abstract assessment of this legal term is not sufficient. Instead, it has to be assessed whether the use of that mark in the concrete and current social context would indeed be perceived by that public as being contrary to the fundamental moral values and standards of society.