Accepted principles of morality and the “Fack Ju Göhte” case

Thursday, 2 of April of 2020

On February 27th, the European Union's Court of Justice (CJUE) issued an interesting judgment in which it stated that both, the contextual elements and the freedom of expression are relevant elements to take into consideration when assessing whether a trademark may be contrary to accepted principles of morality.

We are referring to the judgement in Constantin Film, C-240/18-P, known as the "Fack Ju Göhte" case.

Those who proficient in German may have already noticed that behind this combination of apparently meaningless terms lies the phonetic transcription in German of the English terms "Fuck You" together with the surname of the famous German writer and scientist Goethe. For those who do not have such a good command of the Germanic language, the expression may be equally suggestive, since its phonetic transcription into Spanish is not very different.

"Fack Ju Göhte" is the title of a famous comedy produced by the production company, the applicant in this case, Constantin Film Produktion GmbH, which was also one of the most successful films in 2013 in Germany, having indeed two sequels. In other words, "Fack Ju Göhte" twice more times, one in 2015 and the other in 2017.

The registration of this film title as a trademark was attempted in 2015 as an EU trademark for various products and services. However, the EUIPO rejected this application, considering that it fell under the absolute prohibition of Article 7.1(f) EUTMR (we must clarify that although the case began before the amendment of Regulation 207/2009, being thus, this regulation the applicable one, this article retains the same wording in the current Regulation 2017/1001) as being contrary to accepted principles of morality (note that, as clarified by the General Court, the trademark application was only rejected on this specific ground and not because it was contrary to public policy).

Although the refusal was appealed, first before the Board of Appeal of the EUIPO and after before the General Court, it was dismissed in both instances, until the case reached the CJUE, which, fortunately for Constantin Film, has not followed the same line.

In its analysis of the case, the Court begins by clarifying that the concept of "accepted principles of morality" is not defined in Regulation 207/2009 and in summary, that for the purpose of assessing the moral values and standards to which " accepted principles of morality" refer, it must be taken into account the social context, including, where appropriate, cultural, religious or philosophical diversities that characterize it, in order to assess, in an objective manner, what a society considers to be morally acceptable at that time.

In this vein, it reproaches to the General Court to have confined himself, when trying to demonstrate that the mark applied for was perceived by the general German-speaking public as being contrary to accepted principles of morality, to a mere abstract assessment of the mark applied for and of the English expression to which that public associates the first part of it, without taking into account certain contextual elements which could help to understand how the trademark is perceived by the relevant public. In particular, the Court, agreeing with the Advocate General, points some of those contextual elements:

(i) the great success of the comedy amongst the general German-speaking public
(ii) the fact that its title does not appear to have been particularly controversial
(iii) the fact that the young public was authorized to access to it and that
(iv) the Goethe Institute itself uses this phrase for educational purposes.

According to the Court of Justice, those elements are indications that the German-speaking public in general does not perceive the word sign «Fack Ju Göhte» as morally unacceptable and that, in order to conclude otherwise, it is not correct nor to rely solely on the inherently vulgar nature of that expression, neither to fail to set out conclusively, if the contextual elements are analyzed, the reasons why, despite them, the sign is still regarded as contrary to accepted principles of morality.

Finally, the Court corrects the General Court, which pointed out in the judgment under appeal that there was not, in the field of trade marks, a constant concern to preserve freedom of expression as there would be in the field of art, culture and literature. The CJEU clarifies (on the basis of recital 21 of Regulation 2015/2424, which amended Regulation No. 207/2009, and recital 21 of Regulation 2017/1001) that freedom of expression must be taken into account in the application of Article 7(1)(f) in such a way as to ensure full respect for fundamental rights and freedoms, in particular freedom of expression. However, it does not elaborate further on how that right and that prohibition should be balanced.

What is concluded from this Judgment is that it is not correct to determine in the abstract whether a mark is contrary to acceptable principles of morality, but that this must always be done taking into account the contextual elements, as well as respecting the right of freedom of expression, and a conclusive reasoning will be necessary in the event the trademark was refused on the basis of this ground.