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March 16, 2020
In April 2015 the appellant, Constantin Film Produktion GmbH, applied to register the word sign FACK JU GÖHTE as a EU trade mark in various Classes.
The application was rejected on the basis of Article 7(1)(f) of the Trade Mark Regulation (207/2009/EU).
Constantin Film appealed, but the appeal was rejected by the Fifth Board of Appeal which found, inter alia, that some of the goods and services were targeted at children and adolescents, that the pronunciation of the word element FACK JU was identical to that of the English expression “Fuck you”, and that, consequently, its meaning was identical.
The BoA found that the expression “Fuck you” was an insult in bad taste, shocking and vulgar. As for the word GÖHTE, the BoA said that the fact that a writer as respected as Johann Wolfgang von Goethe was insulted posthumously in such a degrading and vulgar manner, with incorrect spelling, did nothing to temper the insult. Rather, it was an additional level of breach of “accepted principles of morality”.
The BoA also found that while the mark was identical to the title of a successful German film, seen by almost 7.4 million people, it could not infer that the relevant public would not be shocked by the trade mark, and it did not say anything about the social acceptance of the expression.
Constantin Film appealed to the General Court, which affirmed the BoA’s decision.
Constantin Film appealed to the CJEU, submitting that errors had been made in the interpretation and application of Article 7(1)(f) and that the GC had breached the principles of equal treatment, legal certainty and good administration.
The CJEU found that both the General Court and EUIPO had failed to take sufficient account of the fact that a number of contextual factors consistently indicated that, despite the assimilation of the terms “Fack ju” to the English phrase, the title of the comedy film (and its sequels Fack Ju Göhte 2 and 3) was not perceived as morally unacceptable by the German-speaking public at large.
In fact, despite the high profile of the successful films, the titles did not appear to have stirred up controversy among the audience. Further, access by young people to the films, which took place in schools, had been authorised under that title. Moreover, the films received funds from various organisations and were used by the Goethe Institute 2 for educational purposes.
The CJEU also observed that the perception of the English phrase “Fuck you” by the German-speaking public was not necessarily the same as that of the English-speaking public, even if it was well known to the German-speaking public. Sensitivity in the mother tongue may in fact be greater than in a foreign language. For the same reason, the German-speaking public did not necessarily perceive the English phrase in the same way as it would perceive the German translation of it. Further, the title of the films, and therefore the mark applied for, did not consist of the English phrase, but of its phonetic transcription in German, accompanied by the word Göhte.
The CJEU held that in these circumstances, and because no concrete evidence had been presented to explain why the German-speaking public would perceive the mark as going against the fundamental moral values and standards of society when used as a trade mark, even though that same public did not appear to have considered the title of the films to be contrary to accepted principles of morality, EUIPO had failed to demonstrate to the requisite legal standard that the mark could not be registered. Accordingly, the CJEU set aside the judgment of the General Court, annulled the EUIPO’s ruling, and sent the case back to EUIPO to decide again. (Case C-240/18 P Constantin Film Produktion v EUIPO EU:C:2020:118 (27 February 2020) — to read the judgment in full, click here).