Dr David Eyre

May 2020

There is a successful German comedy film that has been followed by not one but two sequels. Would you expect the title of such a comedy to be registerable as a trade mark?

You might, but the title of the comedy is “Fack Ju Göhte” and, basically, was considered too rude to register by the European Union Intellectual Property Office (EUIPO). Subsequently, the EUIPO Fifth Board of Appeal and the EU General Court (in decision T‑69/17) also upheld the initial EUIPO decision.

However, a final appeal to the CJEU followed and in C-240/18 the Courts of Justice of the European Union (CJEU) set aside the General Court’s judgment and annulled the decision of the Fifth Board of Appeal.

The EUIPO examiner refused registration on the grounds that the sign applied for would be contrary to ‘accepted principles of morality’ under Article 7(1)(f) EUTMR. Specifically, this provision states:

1. The following shall not be registered: […] (f) trade marks which are contrary to public policy or to accepted principles of morality

This is an absolute ground for refusing registration and cannot be overcome by inherent or acquired distinctiveness of the trade mark.

The Court noted that ‘accepted principles of morality’ are not defined in the law. Therefore this term must be interpreted in the light of its usual meaning and the context in which it is generally used.

Thus are many factors that contribute to interpretation of this term. However, the CJEU consider that the interpretation of the “accepted principles of morality”:

1. should be narrowly defined, in that only what is both “fundamental” and according with the “social consensus” would exceed these limits. Thus, a phrase that is merely in poor taste would not be sufficient to meet the test;
2. may change over time;
3. is to be assessed objectively, the benchmark being the perspective of a reasonable person with average thresholds of sensitivity and tolerance; and
4. by taking into account all relevant factors at hand.

The CJEU also stated that interpreting this provision:

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, but 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.

C-240/18, para. 43

In the present case, the relevant public is the German-speaking general public in Germany and Austria. The assessment must be carried out from their point of view.

However, the objection is effectively based on a phonetic transcription of “Fack Ju Göhte”, to a well-known English insult/expletive directed at Goethe.

But the question is not how this sounds to an anglophone but how the relevant, German-speaking public perceive the mark “Fack Ju Göhte”? Do they perceive the mark in this way?

1. The CJEU decided that the abstract consideration of the impact of the trade mark to an anglophone was not correct and the General Court should have considered and taken into account:

• the great success of the comedy “Fack Ju Göhte” amongst the German-speaking public at large [as evidenced by the making of sequels and that it was the most popular German-language film of 2014];
• the fact that its title does not appear to have caused controversy;
• the German film classification board authorized access to it by young people; and
• the Goethe Institute (the cultural institute of the Federal Republic of Germany, active worldwide and tasked, inter alia, with promoting knowledge of the German language) uses it for educational purposes.

All the above suggests that “the German-speaking public at large does not perceive the word sign “Fack Ju Göhte” as morally unacceptable”. That is, the “translation” of the mark on which the objection is based is not a free or true translation of the phrase imbued with the meaning that the relevant public would understand the original to convey.

That the translation is inaccurate is borne out by an actual English translation of the title: Fack Ju Göhte was released in the United States under the title “Suck Me Shakespeer”, which appears intended to convey the slang, but not obscene, impression of the original German.

Thus the absolute ground of rejection is based in the specific meaning of the trade mark. Literal translations are not necessarily correct translations; this is only sometimes self-evident. In any case, it is the perception of the users of the language that should define the meaning of a phrase and, hence, whether it is acceptable. It should also be borne in mind that phrases that are crude and/or in bad taste can have their place and are not excluded from registerability.

With this final point in mind, the reasoning of the CJEU in this decision may have wider applicability to other areas of the law where acceptability and morality must be gauged on absolute grounds such as copyright, the moral rights of authors and the limits of acceptability in freedom of expression. It is clear that the nature of those absolute grounds must be decided with respect to a specific group of people rather than the whole of the population of the EU. In contrast, it is also clear that other distinct populations within the EU might misconstrue or misunderstand whether something is acceptable or not and their view must be considered incorrect and disregarded. In an institution such as the EU dedicated to harmonisation and having the same rules for all, providing such nuanced decisions may be a thorny undertaking.

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