By its judgment of 27 February 2020 (C-240/18 P), the Court of Justice of the European Union (CJEU) annulled previous decisions of the General Court (GC) and the EUIPO, both refusing registration of the sign "Fack Ju Göhte" as a word trademark, which corresponds with the title of a German movie series. In contrast to the opinion of the previous instances, the sign "Fack Ju Göhte" would not be contrary to accepted principles of morality.
Background
The applicant is a German film production company. The comedy movie "Fack Ju Göhte" from 2013 and its sequels "Fack Ju Göhte 2" and "Fack Ju Göhte 3" from 2015 and 2017 were seen by a total of ca. 20 million viewers in Germany, which makes them some of the most successful German cinema movies. The films were also very successful in Austria.
In 2015, the production company applied for registration of the wordmark "Fack Ju Göhte" as a EU trademark with the EUIPO, claiming protection for various goods and services including cosmetics, jewelry, stationery, travel and sports articles, games, food and beverages. However, the EUIPO refused the registration with reference to Art. 7 (1) lit. f) in connection with Art. 7 (2) EUTMR since the sign was contrary to accepted principles of morality. The German-speaking public perceived the words "Fack Ju" as a phonetic translation of the vulgar and offensive English expression "Fuck you". The addition of the element "Göhte" would not substantially alter the perception of the offending expression.
The action brought against this refusal before the GC was unsuccessful. Thereupon, the applicant appealed to the CJEU.
CJEU decision: Importance of social context
The appeal was successful. The CJEU annulled the decisions of the GC and the EUIPO. The EUIPO will have to decide again on the registration of the trademark.
First of all, the CJEU clarified that the examination of a sign which may be contrary to accepted principles of morality should not be limited to an abstract assessment of the trademark applied for, or even of its individual elements. Rather, it had to be shown that the use of that trademark in the precise and current social context was in fact perceived by the relevant public as an infringement of the fundamental moral values and norms of society. However, such a proof had not been provided by the previous instances. Despite the equation of the words "Fack Ju" with the English expression "Fuck you", the title of the comedy movies at issue were not perceived by the German-speaking public at large as being morally reprehensible, and neither did they cause any controversial discussions within the public. In addition, young viewers had also been admitted to the movies which were set in a school environment. Moreover, the films had even been supported by funds from various organizations and used by the Goethe-Institute for teaching purposes.
The CJEU further held that the perception of the popular English expression "Fuck you" by the German-speaking public was not necessarily the same as the one of an English-speaking public. Thus, a linguistic sensitivity re a particular expression could be much more significant in the mother tongue than in a foreign language.
Overall, as a result it had not been proven that the trademark applied for had to be subject to an absolute ground for refusal.
Comment
In the present case, the CJEU for the first time had the opportunity to clarify the criteria for the assessment of a possible violation of morality through an applied for trademark. According to the CJEU, a particular emphasis had to be laid on the understanding of the relevant public in the precise and current social context. By its judgment, the CJEU concurs with the opinion of Advocate General Bobek of 2 July 2019.
The previous decision of the GC had still indicated different views on the violation of morality through trademarks in European or national / German decisions. A harmonization can now be observed. In German trademark law, the protection of principles of morality had been less strict for a longer period of time already: The German trademark register even tolerates, for example, the trademark "Ficken" ("fucking") for a well-known liqueur. It still has to be seen whether the EUIPO would accept an application for a corresponding EU trademark. A prompt registration of the trademark "Fack Ju Göhte" can, however, be expected.
Authored by Patrick Fromlowitz and Yvonne Draheim
