the matter at hand

Constantin Film Produktion GmbH (‘Constantin Film’), who (co)produced a very successful trilogy of German comedy films with the (shared) film title “Fack ju Göhte”, applied for registration of the word sign ‘Fack Ju Göhte’ as an EU trade mark on 21 April 2015 for goods and services in a range of classes.

This trade mark application was refused by the EUIPO on the basis of Article 7(1)(f) of the Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, as running counter to accepted principles of morality, which decision was upheld by the Fifth Board of Appeal. The Board of Appeal, inter alia, held that the relevance of the success of the eponymous comedies as one of the contextual factors was to be invalidated by the fact that the absolute ground for refusal in Article 7(1)(f) of Trade Mark Regulation 207/2009 cannot be overcome by proof of the distinctive character acquired through use. The General Court upheld the decision of the Board of Appeal.

In support of its appeal to the ECJ, Constantin Film inter alia alleges infringement of Article 7(1)(f) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark by the General Court. This first ground of appeal was divided in four parts, namely that the General Court (i) breached the principle of individual examination in that it did not examine the mark applied for, namely Fuck Ju Göhte, but rather the sign ‘Fuck You, Goethe’, (ii) applied the absolute ground for refusal relating to accepted principles of morality too broadly, (iii) wrongly found that it has not been established that the German-speaking public is not shocked by the sign applied for in relation to the goods and services at issue, and (iv) erred in law when balancing the appellant’s interest in the registration of the mark applied for and the public interest in not being confronted with marks which are contrary to accepted principles of morality.

the judgment of the ecj

As regards Article 7(1)(f), the ECJ holds that ‘accepted principles of morality’ is not defined by Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, and must be interpreted in the light of its usual meaning and the context in which it is generally used. The values and norms underlying these principles “should be determined according to the social consensus prevailing in that society at the time of the assessment, where due account is to be taken of the social context, including, where appropriate, the cultural religious or philosophical diversities that characterize it” (paragraph 39).

This requires an examination of all the elements specific to the case (paragraph 40), and 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 Union concerned. “To that end, elements such as legislation and administrative practices, public opinion and, where appropriate, the way in which the relevant public has reacted in the past to that sign or similar signs, as well as any other factor which may make it possible to assess the perception of that public, are relevant” (paragraph 42).

This examination cannot be confined to an abstract assessment of the mark applied for, but it must be established that the use of the mark in the concrete and current social context would indeed be perceived as being contrary to the fundamental moral values and standards of society, in particular where an applicant has relied on factors that are liable to cast doubt in that regard (paragraph 43).

The ECJ holds “The fact that it is the mark itself which is to be examined does not mean that, in the course of that examination, contextual elements capable of shedding light on how the relevant public perceives that mark could be disregarded” (paragraph 51). In the case at hand, those factors include the great success of the comedy of the same name amongst the German-speaking public at large and the fact that its title does not appear to have caused controversy, as well as the fact that access to it by young people had been authorized and that the Goethe Institute – which is the cultural institute of the Federal Republic – uses it for educational purposes (paragraph 52).

According to the ECJ. the General Court, in concluding that the sign is incompatible with accepted principles of morality could not rely solely on the intrinsically vulgar character of that English phrase without examining those factors or setting out conclusively the reasons why it considered, despite those factors, that the German-speaking public at large perceives that sign as running counter to the fundamental moral values and standards of society when it is used as a trade mark (paragraph 53).

Furthermore, the ECJ emphasizes that both Trade Mark Regulation 2015/ 2424 and Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark need to be applied in such a way as to ensure full respect for fundamental rights and freedoms, in particular freedom of expression.

The ECJ then goes on to assess that rather all of these contextual factors consistently indicate that, despite the assimilation of the terms ‘Fack ju’ to the English phrase ‘Fuck you’, the title of the comedies was not perceived as morally unacceptable by the German-speaking public at large. 

Under the circumstances in the case at hand, and in view of the fact that no concrete evidence has been put forward plausibly to explain why the German-speaking public at large will perceive the word sign ‘Fack Ju Göhte’ as going against the fundamental moral values and standards of society when it is used as a trade mark, even though that same public does not appear to have considered the title of the eponymous comedies to be contrary to accepted principles of morality, it must be held that EUIPO has failed to demonstrate to the requisite legal standard that Article 7(1)(f) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark precludes registration of the mark applied for (paragraph 69).

The ECJ holds that whereas the absolute ground for refusal in Article 7(1)(f) Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark cannot be overcome by proof of the distinctive character acquired through use, within the meaning of Article 7(3) of that regulation, “the success of the eponymous comedies with the relevant public and, in particular, the absence of controversy as regards their title must be taken into account in order to determine whether the relevant public perceives the mark applied for as contrary to accepted principles of morality […]“ (paragraph 70).