Passing Moral Judgment: CJEU Rules ‘Fack Ju Göhte’ Trademark Can Be Registered
10 March 2020
Authors: Sarita Schröder and Panu Siitonen
Under EU law, a trademark cannot be registered if it is contrary to accepted principles of morality. On 27 February 2020, the Court of Justice of the European Union (the ‘CJEU’) ruled for the first time on the interpretation and application of this rule. In case C-240/18 P, the CJEU found on appeal that the word mark ‘Fack Ju Göhte’ was not contrary to accepted principles of morality and that it could, thus, be registered.
Background of the Case
‘Fack Ju Göhte’ is the title of a German comedy film produced by Constantin Film Produktion GmbH (the ‘appellant’). It was one of the most successful films of 2013 in Germany.
In 2015, the appellant applied to register the word mark ‘Fack Ju Göhte’ as an EU trademark for a wide variety of goods and services, including ‘entertainment, in particular film and television entertainment’. The European Union Intellectual Property Office (the ‘EUIPO’) refused the application on the grounds that the mark was contrary to accepted principles of morality.
The appellant’s appeals seeking to reverse the decision were dismissed, firstly, by the Fifth Board of Appeal of the EUIPO and, subsequently, by the General Court. Consequently, the appellant brought a final appeal before the CJEU.
Assessing the Moral Quality of Trademarks
The CJEU noted that, since the concept of ‘accepted principles of public morality’ is not defined in the relevant legislation, it must be interpreted in light of its usual meaning and in the context in which it is generally used. Interpreted in this way, the concept refers to the fundamental moral values and standards to which a society adheres at a given time. These values and norms, which are likely to change over time and vary in space, should be determined according to the social consensus prevailing in that society at the time of the assessment.
According to the CJEU, the examination of whether a mark is contrary to accepted principles of public morality requires a concrete and objective examination of all of the elements specific to the case in order to determine how the relevant public would perceive the mark if it were used as a trademark for the goods or services covered by the application. 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 EU concerned.
In order for a trademark application to be refused, it is not sufficient that the mark at issue is regarded as being in bad taste. Rather, according to the CJEU, it must, at the time of the examination, be perceived by the relevant public as contrary to the fundamental moral values and standards of society as they exist at that time.
The CJEU’s Judgment
The CJEU found that the assessment carried out by the General Court did not meet the standards set out above because it had been confined to an abstract assessment of the mark in question and, in particular, the English expression to which its first part is assimilated by the relevant public.
According to the CJEU, the General Court had failed to take into account contextual factors shedding light on how the relevant public actually perceives the mark. These factors included the great success of the comedy film of the same name amongst the German-speaking public at large, the fact that the title of the film did not appear to have caused any controversy, the fact that access to the film by young people had been authorised, and the fact that the Goethe Institute – which is the cultural institute of the Federal Republic of Germany – used the film for educational purposes.
Therefore, the CJEU found that the General Court’s judgment had to be set aside. The CJEU also considered that the state of the proceedings permitted it to give a final judgment in the matter.
In light of the aforementioned contextual factors, the CJEU concluded that, despite the assimilation of the term ‘fack ju’ to the English phrase ‘fuck you’, the title of the comedy film was not perceived as morally unacceptable by the German-speaking public at large. The CJEU also noted that no concrete evidence had been put forward to plausibly explain why the German-speaking public at large would perceive the mark ‘Fack Ju Göhte’ as morally unacceptable when used as a trademark, despite the fact that the same public does not appear to have considered the title of the eponymous comedy film in this way.
Consequently, the CJEU held that the EUIPO had failed to demonstrate that it was justified to refuse the application on the grounds that the mark was contrary to accepted principles of morality.
The freedom of expression is a fundamental right enshrined in the Charter of Fundamental Rights of the European Union. It is specifically stipulated in EU trademark legislation that its provisions must be applied in a way that ensures full respect for fundamental rights and freedoms, and in particular, the freedom of expression.
Thus, as argued by the appellant in the case at hand, the prohibition on registering trademarks that are contrary to accepted principles of morality should be applied restrictively and as objectively as possible in order to avoid the risk that marks might be excluded from registration solely because they are not to the personal taste of the examiner. It could further be contended that – save for marks comprising or including clearly illegal content – it should generally be left to the free market economy, not to the authorities, to determine whether or not a trademark is morally acceptable.
The CJEU’s judgment set the bar for refusing the registration of trademarks on moral grounds higher than had previously been set by the EUIPO and the General Court. As the immorality of a trademark nevertheless constitutes absolute grounds for its refusal, which the EUIPO and national trademark offices must examine at their own initiative, brand owners wishing to push the envelope with morally debatable trademarks should be prepared to submit arguments and evidence showing that their mark is not liable to offend the cultural, religious, or philosophical sensitivities of the relevant public.