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CJEU rules on the refusal ground concerning marks contrary to accepted principles of morality

Abstract

The original version of this author's version is forthcoming in Journal of Intellectual Property Law & Practice [2020]. This case comment concerns the judgment of the CJEU in Case C‑240/18 P Constantin Film Produktion GmbH v EUIPO of 27 February 2020. The Court of Justice considered the trade mark ‘Fack Ju Göhte’ as not being contrary to accepted principles of morality under Art 7(1)(f) of the Regulation 2017/1001, setting aside the previous judgment of the General Court and simultaneously annulling the decision of the Fifth Board of Appeal of the EUIPO.
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Immoral trade marks: CJEU rules on the refusal ground concerning marks
contrary to accepted principles of morality
Łukasz Żelechowski
University of Warsaw, Faculty of Law and Administration
Court of Justice of the European Union, Case C-240/18 P Constantin Film Produktion GmbH
v EUIPO, 27 February 2020
The Court of Justice considered the trade mark ‘Fack Ju Göhte’ as not being contrary
to accepted principles of morality under Art 7(1)(f) of the Regulation 2017/1001, setting
aside the previous judgment of the General Court and simultaneously annulling the
decision of the Fifth Board of Appeal of the EUIPO.
Legal context
Article 7(1)(f) of Regulation 2017/1001 on the EU trade mark (EUTMR) prohibits the
registration of trade marks which are contrary to public policy or to accepted principles of
morality. A corresponding refusal ground is set forth in Art 4(1)(f) of the Trade Mark
Directive 2015/2436 (TMD). The application of this refusal ground leaves a considerable
room for a judicial appreciation. The judgment of the Court of Justice (CJ) in Constantin Film
Production case purports to shed more light on the manner in which Art. 7(1)(f) EUTMR
should be applied to immoral marks.
Facts
The trade mark in question was a word mark ‘Fack Ju Göhte’ which was filed in 2015 by
Constantin Film Produktion (Constantin) for registration as an EU Trade Mark for a wide
variety of goods and services. The misspelled variation of the English vulgar phrase ‘fuck
you’ combined with the misspelled name of the German preeminent literary figure - Goethe -
was a title of a German film comedy that displayed the frustration of school students. It was
one of the most successful films in Germany in 2013 and was followed by two sequels. The
mark was rejected by the EUIPO as being contrary to accepted principles of morality. The
Fifth Board of Appeal of the EUIPO (BoA) and the General Court sided with this view.
Among the three grounds that Constantin raised in its appeal against the judgment of the
General Court, the first ground concerned the infringement of Art. 7(1)(f) EUTMR (formally
of identical Art. 7(1)(f) of the previous Regulation 207/2009 which was applicable on the
filing date of the mark). Since the CJ considered this ground as sufficient to allow the appeal,
it did not proceed with examining the two remaining grounds.
Analysis
The CJ not only set aside the judgment of the General Court but also considered itself to be in
a position to annul the decision of the BoA and to issue a final judgment in the matter. First,
the CJ noted that since the sign in question had been refused solely on the ground of being
contrary to accepted principles of morality, it was not necessary to analyse the other part of
Art 7(1)(f) EUTMR – the public policy clause. Next, the CJ made general remarks concerning
the assessment of immoral character of trade marks (paras. 39-43). In the CJ’s view, the
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notion of accepted principles of morality ought to be interpreted ‘in the light of its usual
meaning and the context in which it is generally used’; that assessment must take account of
‘fundamental moral values and standards to which a society adheres at a given time’ and must
be an objective one (para. 39). The CJ also stressed that the social consensus on
understanding of morals might change over time and might be territorially diversified.
Further, the CJ provided more specific guidance by naming two elements that are essential for
the proper assessment, the first element being the necessity of taking into account the
perception of a reasonable person with average thresholds of sensitivity and tolerance.
Second, the CJ considered it necessary to take account of the context in which a mark applied
for could be encountered. The latter element is arguably the most crucial one distinguished in
the judgment: the CJ made it clear that the assessment of immoral marks should not be
abstract, i.e. it should not be limited to the mark itself (or its components), but it must take
account of the use ‘in the concrete and current social context’, in order to establish whether
the mark could be perceived by the relevant public as immoral (para. 43).
The CJ subsequently assessed the mark ‘Fack Ju Göhte’ in the light of the above framework.
First, it determined the relevant public as a German-speaking general public, in particular in
Germany and Austria. Next, the CJ pointed out that the both the General Court and the BoA
had failed to make a contextual assessment and to take account of factors that were a priori
indicative of social acceptance of the mark, such as: the great success of the film under the
title ‘Fack Ju Göhte’, the fact that this title did not appear to have caused controversy, and
eventually the fact that the film had been used for educational purposes, notably by the
reputable Goethe Institute which promotes the German language worldwide. In the CJ’s view,
the General Court erroneously relied solely on the vulgar character of the English phrase
‘fuck you’ instead of taking into account that the misspelled mark ‘Fack Ju Göhte’ would not
necessarily be perceived as vulgar by the German-speaking public. According to the CJ, the
contextual assessment should have been made by the EUIPO ex officio since it concerned the
assessment of the absolute refusal ground (as per Art. 95(1) EUTMR which replaced the
previous Art. 76(1) of Regulation No 207/2009 referred to by the CJ). Simultaneously the CJ
stressed, however, that this assessment was not contingent on establishing that public
recognised the mark in question as the title of the film or as a joke; the CJ noted that the
absence of those two circumstances did not of itself serve to establish a violation of accepted
principles of morality. The latter statement might be slightly puzzling in the light of the
previous emphasis put by the CJ on the relevance of factual circumstances surrounding the
use of the mark ‘Fack Ju Göhte’. This statement might, however, carry with itself an
implication that the contextual assessment of immoral marks does not necessarily require
extensive empirical evidence and it can be made by the adjudicating body in the light of a
general social context.
The analysis made by the CJ was topped off by a forceful statement that freedom of
expression, as guaranteed by Art. 11 of the Charter of Fundamental Rights of the EU (the
Charter) must be taken into account when applying Article 7(1)(f) EUTMR. This remained in
line with the opinion of Advocate General Bobek and simultaneously in stark contrast to the
appealed judgment in which the General Court appeared to have generally rejected the need to
preserve freedom of expression within the realm of trade mark law.
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Practical significance
Employment in registration proceedings of the contextual approach adopted by the CJ might
result in a greater number of shocking marks being considered as not falling under the refusal
ground set forth in Art. 7(1)(f) EUTMR and also in national provisions implementing Art.
4(1)(f) TMD.
Next, the significance of CJ’s statement about the need to preserve freedom of expression
when applying Art 7(1)(f) EUTMR might be unclear. It does, however, constitute a departure
from the view expressed in earlier case law of the General Court that freedom of expression
was not restricted by a refusal to register an immoral mark since the mark could still be used
(judgment of 9 March 2012, T-417/10 Federico Cortés ‘HIJOPUTA’, EU:T:2012:120, para.
26; judgment of 14 November 2013, T-52/14 Efag ‘FICKEN’, EU:T:2013:596, para. 40). The
judgment in Constantin case recalibrates this approach, which should be considered as a step
in the right direction. This is certainly a topical issue in the light of developments taking place
in US case law where the need to preserve free speech has led the US Supreme Court to
consider as unconstitutional the federal registration bar concerning disparaging marks (Matal
v Tam, No. 15-1293, 19 June 2017) and immoral or scandalous marks (Iancu v Brunetti, No.
18–302, June 24, 2019). The Constantin judgment contains no implication that Art. 7(1)(f)
EUTMR could be contrary to the Charter. It could imply, however, that the application of this
provision should in individual cases take account of the proportionality test which sets limits
to freedom of expression as a fundamental right. This would mean that a refusal to register an
immoral sign should be preceded by answering the question whether preventing the
commercial presence of a given sign is necessary in a democratic society (art. 52(1) and (3) of
the Charter in conjunction with Art. 10(2) of the European Convention on Human Rights).
Regarding the argument that freedom of expression is not endangered since a refused mark
can still be used, one can put forward the following question: if a given sign can be factually
used as a trade mark without stumbling upon limitations to freedom of expression that are
legitimate and proportionate in the light of the Charter, why should its registration be refused?
It appears that the Constantin judgment might mark the path to an integrated approach
towards setting the permissible level of scandalous content of trade marks under the Charter
and Art. 7(1)(f) EUTMR.
Lastly, shocking marks might often be composed of elements which should not be registered
for other reasons then their offensive character, eg. plain swearwords should be left in the
public domain. Until now such marks were normally prevented from being registered already
at the ‘immorality’ check. Following CJ’s position in the Constantin judgment, more of them
are likely to pass this check, but some of them might and should fail at subsequent checks,
those in particular being refusal grounds caused by a lack of inherent distinctiveness,
descriptiveness or customary character of a mark.
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