A new chance for the European Union trademark application “FACK JU GÖTHE”

The word mark “FACK JU GÖTHE” can be registered as a European Union trademark, decided the Court of Justice of the European Union in a decision dated February 27, 2020. This decision overrules the European Union intellectual property office (EUIPO) decision, confirmed by the General Court, that this applied-for mark was contrary to the Article 7, (1), (f), of Regulation No.207/2009 [1], namely, contrary to principles of morality which.

As we have seen in our previous news concerning the opinion of the Advocate General Bobek (read our TAoMA News of July 18, 2019 in French), the company Constantin Film Produktion Gmbh, filed in 2015 the European Union Trademark Application “FACK JU GÖTHE” before the EUIPO. If this sign is intended to designate various goods or services of daily life, it is also the title of a German comedy movie which enjoyed great success in German-speaking countries and had several sequels.

The EUIPO, approved by the General Court, refused registration of this word sign on the ground that the first words “FACK JU” were phonetically identical to the English insult “FUCK YOU” and that the sign taken as a whole was therefore an expression of bad taste, offensive and vulgar, by which the writer Johann Wolfgang Goethe was posthumously insulted [2], and this, notwithstanding the applicant’s arguments as to the context surrounding the release of the film bearing the same name.

Constantin Film Produktion GmbH then brought an appeal before the Court of Justice against the latter decision, alleging, inter alia, errors in the interpretation and application of Article 7(1)(f) of Regulation No 207/2009, which excludes from registration trademarks “contrary to public policy or to accepted principles of morality”.

Following the reasoning of Advocate General Bobek, the Court, in its decision of 27 February 2020, annuls the decisions of the General Court and the EUIPO.

According to the Court, the EUIPO and the General Court disregarded the standards required by Article 7(1)(f) of Regulation No 207/2009, in the light of which it is necessary to carry out an analysis of all the elements specific to the case in order to determine precisely how the relevant public would perceive the sign in question.

Indeed, the EUIPO, as well as the General Court, relied solely on an abstract assessment of that mark and of the English expression to which the first part is assimilated. But the Court considers that they should have examined more carefully the social context and the factual elements invoked by the applicant and should have explained more conclusively the reasons why these elements had been left out of its analysis.

Among these factual elements, there was more than convincing evidence: in particular, the great success of the comedy movie of the same name and the fact that its title does not appear to have caused controversy among the German-speaking public. In addition, the young audience had been allowed to see the film when it was released and was the primary target. Finally, the Goethe Institute, which is a reference in the promotion of the German language on a national and worldwide level, used it for educational purposes.

Furthermore, the Court underlines the fact that the perception of the English expression “FUCK YOU” by the German-speaking public is not necessarily the same as its perception by the English-speaking public. While it is true that this expression is well known to the non-English-speaking public, its semantic content may be slightly different or even diminished in a foreign language. It is especially true in the present case because the first part of the trademark application at issue does not consist of the English expression as such, but of its phonetic transcription in German, accompanied by the element “Göthe”.

In the light of all these factors, the Court considers that the EUIPO and the General Court misinterpreted and misapplied Article 7(1)(f) of Regulation No. 207/2009 and, accordingly, cancels the corresponding decisions.

Finally, as we indicated in our previous TAoMA News, Constantin Film Produktion GmbH also invoked freedom of expression as an element to be taken into account in the assessment of Article 7(1)(f) of Regulation No. 207/2009. While the Court is less affirmative than its U.S. counterpart (the U.S. Supreme Court has recently ruled that the US Trademark Act on immoral, misleading or scandalous trademark is contrary to the freedom of expression guaranteed by the US Constitution, see our TAoMA News of July 4, 2019 in French), it acknowledges, for the first time to our knowledge, that freedom of expression must be taken into account when applying this provision of trademark law in order to ensure respect for fundamental rights and freedoms, in particular in accordance with Article 11 of the Charter of Fundamental Rights of the European Union [3].

The future of the trademark “FACK JU GÖTHE” is now in the hands of the EUIPO which will, for the second time, have to proceed with its examination. Full of learnings, the decision of the Court should probably influence the latter and lead to the registration as a trademark.

Baptiste Kuentzmann
Lawyer

Read the decision on CURIA.

[1] Article 7 (1)(f) Regulation (EU) 207/2009: “1. The following shall not be registered: (…) f) trademarks which are contrary to public policy or to accepted principles of morality”. Applicable provision in this case, now replaced by Regulation (EU) 2017/1001 ;

[2] EGC, January 24, 2018, T-69/17, Constantin Film Produktion/EUIPO (Fack Ju Göthe) ; Fifth Board of Appeal of the EUIPO, December 1, 2016, R 2205/2015-5, (Fack Ju Göthe) ;

[3] Article 11 of the Charter of Fundamental Rights of the European Union: “1. Everyone has the right to freedom of expression. This right shall include freedom to hold opinions and to receive and impart information and ideas without interference by public authority and regardless of frontiers.”