(Mar. 31, 2020) On February 27, 2020, the European Court of Justice (ECJ) ruled that “no concrete evidence has been put forward” that the registration of the word sign “Fack Ju Göhte” as an EU trade mark would be “against the fundamental moral values and standards of society.” (Case C‑240/18 P, para. 69.) The ECJ held that the judgment of the General Court of January 24, 2018 (judgment under appeal) must be set aside and that the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of December 1, 2016, is annulled.
EU trade marks are currently governed by Regulation (EU) 2017/1001 (Current Regulation), which entered into force on October 1, 2017. It repealed and replaced the previous Council Regulation No 207/2009 (Former Regulation). Because of the date of the appellant’s EU trade mark application (April 21, 2015), the facts of this case are governed by the Former Regulation.
EUIPO is the EU agency that administers EU trade mark applications and implements the relevant law. (Current Regulation art. 2.) When an EU trade mark application is made, EUIPO evaluates whether there are “absolute grounds for refusal,” which are listed in article 7 of the Former Regulation.
Facts of the Case
Constantin Film (appellant) produced a series of films under the franchise “Fack Ju Göhte.” The first movie was released in 2013 and became one of the most successful films of the year in Germany. The sequels were released in 2015 and 2017. (Case C‑240/18 P, para. 9.)
On April 21, 2015, Constantin Film applied to EUIPO to register the phrase “Fack Ju Göhte” as an EU trade mark. On September 25, 2015, EUIPO rejected Constantin Film’s application on the basis of Article 7(1)(f) of the Former Regulation, which states that “trade marks that are contrary to public policy or to accepted principles of morality [shall not be registered].” This clause is still valid under the Current Regulation as article 7(1)(f). Constantin Film appealed the decision, but the appeal was rejected in 2016 by the Fifth Board of Appeal of EUIPO (Board of Appeal). (Case R 2205/2015-5 (contested decision).) In the contested decision, the Board of Appeal ruled that the pronunciation, and thus the meaning, of “Fack Ju” were identical to the phonetically-similar English-language phrase. According to the Board of Appeal, this attributed “sexual connotations” to the expression and, in any case, was “an insult in bad taste, shocking and vulgar.” (Opinion of Advocate General Bobek Case C-240/18 P (AG Opinion), para. 9, quoting the contested decision.) Moreover, in the opinion of the Board of Appeal, the addition of “Göhte” (a phonetic transcription of the writer Johann Wolfgang von Goethe’s name) insulted the author and “constitutes an additional level of breach.” (Para. 10.) The Board of Appeal also stated that “it is not possible to infer from the success of the film that the relevant public would not be shocked by the trade mark in question.” (Para. 11.)
Constantin Film brought the contested decision before the General Court in 2017. The General Court dismissed the appeal in 2018, endorsing the arguments of the Board of Appeal. Constantin Film appealed the judgment of the General Court to the ECJ, which held in favor of the appellant. (Case C 240/18 P, paras. 57–58, 71.)
Constantin Film’s primary ground for appeal was the infringement of article 7(1)(f). The ECJ focused its arguments on this article and did not examine the other grounds for appeal.
The General Court found that EUIPO rejected Constantin Film’s application solely on the ground that the word sign “Fack Ju Göhte” would be contrary to “the accepted principles of morality.” (Para. 38.) This concept is not defined in the Former Regulation. The ECJ, in its decision, interpreted it to mean society’s “fundamental moral values and standards [at a given time].” (Para. 39.) The ECJ pointed out that in examining an EU trade mark application EUIPO must take into account a number factors in the social context, and that it is not sufficient that the concerned sign be rejected because it is “in bad taste.” (Paras. 39–41.) The ECJ found that conducting an “isolated” and “abstract” assessment of the mark is not enough to reach a decision on accepted principles of morality. (Paras. 43, 50.) There must be regard for “social context and factors” because contextual elements shed light on how the public perceives that mark, in the opinion of the Court. (Paras. 50–51.)
In paragraph 52 of its decision, the ECJ considered the following as evidence that EUIPO and the General Court had failed to meet the legal standards outlined above in their interpretation and application of article 7(1)(f):
- Regulators in Germany allowed the release of the films under their original titles (according to AG Opinion para. 94).
- The films were a great success and, at the time of their release, there was no public controversy regarding their title.
- There were no restrictions for younger audiences, and the films were authorized to be screened at schools.
- The films are used as an educational tool by the Goethe Institute, which is the cultural institute of Germany.
The ECJ concluded that these factors show that the title of the movies was not perceived as morally unacceptable by the German-speaking public. (Para. 53.) The ECJ additionally found that reducing the first part of the trade mark to the English equivalent and relying only on “the intrinsically vulgar character” of the English phrase without examining the context of the mark’s use is not sufficient to satisfy the legal requirements of EUIPO’s examination. (Paras. 53–54.)
Prepared by Zeynep Timocin Cantekin, Law Library intern, under the supervision of Jenny Gesley, Foreign Law Specialist.