Fack-Ju-Göhte

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“Fack Ju Göhte” is a German comedy film of some success in that country. The producing company, Constantin Film Produktion GmbH, tried to register it as a mark, which was rejected first by EUIPO and then by the General Court on the basis of article 7(1)(f) of Regulation (EU) 2017/1001 on the European Union trade mark—i.e., for being contrary to public policy or to accepted principles of morality for the relevant public (German-speaking consumers in Germany and Austria).

The grounds for refusal seem clear: on the one hand, the expression is an obvious wordplay—a German phonetic transcription of “Fuck you” and the word “göhte,” intended to evoke the renowned writer Johann Wolfgang von Goethe; on the other hand, the mark application refers to a large number of general consumer goods unrelated to the film (class 3, 9, 14, 16, 18, 21, 25, 28, 30, 32, 33, 38 and 41 of the Classification, from perfumery to toys). The expression would be offensive to a consumer of any of these goods, who might not associate it with the film in question.

The producer appealed to the Court of Justice and on July 2, 2019, the Advocate General delivered its Opinion in favor of the appellant. Both the case and the Opinion are relevant. The Opinion refers to many precedents of similar marks either rejected (¡Que buenu ye! HIJOPUTA or FICKEN LIQUORS) or accepted (e.g., Fucking Hell, MACAFUCKER, DIE WANDERHURE or JEWISH MONKEYS), which shows how vague the concept is. But more importantly, the AG’s Opinion: (i) makes a commendable effort to define and distinguish the concepts of public policy and accepted principles of morality, both of which appear in Art. 7(1)(f) of the Regulation; and (ii) acknowledges the role of freedom of expression in the field of trade marks.

As regards the first point, despite the overlap between both concepts, the AG considers that, “Public policy is a normative vision of values and goals, defined by the relevant public authority, to be pursued now and in the future, that is, prospectively.” Such values and goals are thus objective and articulated from the top down. In contrast, accepted principles of morality refer to “convictions currently adhered to by a given society, set and enforced by the prevailing social consensus within that society at a given time”—therefore subjective and established from bottom to top. While public policy must have been stated and can be verified, accepted principles of morality require an empirical assessment of what society considers acceptable norms of conduct. In the AG’s view, both the EUIPO and the General Court failed to provide sufficient grounds for rejecting the mark Fack Ju Göhte.

The issue of freedom of expression is also interesting, although the AG’s Opinion does not shed much light. The Regulation itself acknowledges that freedom of expression applies to trade marks (recital 21). The Advocate General reaffirms this but does not seem to regard it as an independent criterion for the assessment of trade marks. He merely points out that, “In contrast to the fields of arts, culture, and literature, the weight to be given to freedom of expression in the area of trade mark law may be somewhat different, perhaps slightly lighter, in the overall balancing of the rights and interests present.”

In any event, the Opinion makes clear how far apart European and American practices are on this issue. In the United States (US), the right to free speech enshrined in the First Amendment is a fundamental principle underpinning the entire legal system—including trade mark law. In 2017 in Matal v. Tam (137 S. Ct. 1744 (2017)) the Supreme Court ruled that the provision of the Lanham Act (15 U.S.C. § 1052(a)) which bars registration of marks that disparage a group of persons (in that case, the trade mark The Slants, which in the US is understood to denigrate Asian people) was unconstitutional as contrary to freedom of speech; in the same vein was the January 24, 2019 decision in Iancu v. Brunetti (No. 18-302 (U.S. Jun. 24, 2019)) regarding the prohibition on the registration of offensive marks (in the case in question, again, the mark “FUCT”).

In its judgment, the Court of Justice may be tempted to address the issue of freedom of expression in the context of trade marks. However, it seems unlikely as it is not necessary to rule on the merits—the court can easily focus on the concept and proof of accepted principles of morality. In this latter case we will have to wait for another attempt to register some variant of the “F-Word.

By Jorge Llevat

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jorge.llevat@cuatrecasas.com