Accepted principles of morality and application for registration of “Fack Ju Göhte” as trademark

A few months ago on this blog, we discussed Advocate General Bobek’s opinion in favor of registering the word sign “Fack Ju Göhte” as an EU trademark. On February 27, the Court of Justice of the European Union finally delivered a judgment on this matter (Constantin Film Produktion GmbH c. EUIPO, Case C-240/18 P), accepting to register the trademark and setting aside the General Court’s judgment and EUIPO’s decision.

Beyond the anecdote, we consider the judgment to be significant for two reasons. First, because it aims to delineate an extremely vague notion, “accepted principles of morality,” established as an absolute ground for refusal of an EU trademark application in Article 4(1)(f) of Directive (EU) 2015/2436, of December 16, 2015, and in Article 7(1)(f) of the Regulation on the European Union trademark. Second, because it considers “freedom of expression” when applying this ground for refusal.

Regarding the first aspect, i.e., the meaning of “accepted principles of morality,” the court is in line with the advocate general’s view. The court rules that this notion “refers, in its usual sense, to the fundamental moral values and standards to which a society adheres at a given time.” These values and norms must be determined “according to the social consensus prevailing in that society at the time of the assessment.” To do this,  the social context’s defining features, whether cultural, religious or philosophical, must be considered.

In this case, the court considered that, despite this expression’s intrinsic vulgarity, there were other aspects to consider. More specifically, the court notes that comedies and the film in question, “Fack ju Göhte,” had been watched by several million people in Germany and Austria. The court adds that (i) the comedies did not spark controversy; (ii) access by young people to these comedy movies had been authorized, and (iii) the Goethe Institute (cultural institute of Germany, active worldwide and tasked with promoting knowledge of the German language and culture) used it for educational purposes. Consequently, in the court’s view, there is no evidence that the relevant public in this case, a German-speaking audience, found that the use of “Fack Ju Göhte” as a trademark was contrary to society’s fundamental moral values and standards.

The judgment acknowledges that freedom of expression, enshrined in Article 11 of the Charter of Fundamental Rights of the European Union, had to be considered, as required by Recital 21 of the Regulation on the EU trademark (in line with Recital 27 of the  directive). The judgment does not mention this matter other than this broad reference. This lack of further elaboration on freedom of expression could be expected, as it was not necessary to settle the case. However, it is a missed opportunity to gain a better understanding of how to apply this principle, first set out in Directive 2015/2436 within trademark law.

As reported on this blog when discussing Advocate General Bobek’s opinion, we must wait for future cases to learn the scope of freedom of expression: whether as a limit on the grounds for refusal of trademark applications or as a limit on the exercising of the exclusive rights conferred by a trademark.

Author: Jorge Llevat