In this case it is analyzed whether or not the distinctive sign «Fack ju Göhte» falls under the absolute prohibition of Article 7.1. f) of the European Union Regulation. The Court concludes that it is not contrary to accepted principles of morality and therefore does not fall within the scope of that prohibition.

In 2015, Constantin Film Produktion applied for registration of the trademark «Fack ju Göhte» at the European Union Property Office (EUIPO). This application was rejected on the grounds that the term was contrary to Article 7.1. f) of the European Union Trade Mark Regulation and, in particular, to morality. An appeal was lodged with the Board of Appeal of the EUIPO and the appeal was dismissed.

It should be noted that «Fack ju Göhte» is a German comedy film released in 2013 which was quite successful and well received in German-speaking countries.

However, this was not sufficient for a further decision in 2018, this time by the General Court, Case C-69/17, to uphold the earlier EUIPO decisions, finding, once again, that «the mark applied for, as a whole, was inherently vulgar and liable to offend the relevant public».

Following the latter decision, Constantin Film Produktion appealed to the Court of Justice of the European Union (CJEU), claiming (i) that both the EUIPO and the General Court had made a broad and even abusive interpretation of the concept of good customs; (ii) that the expressions «fuck» and «fuck you» had lost their vulgar meaning due to the evolution of language in today’s society; (iii) and that the phonetic transcription in German of the expression «fuck you» (in English), together with the element «Göhte», designates unpopular school subjects, giving, as a general impression, that the mark applied for contains an anodyne, childish and playful character expressing school frustration.

In response to these allegations, the ECJ, in its judgment, defines the concept of good morals as those «fundamental values and moral standards accepted by a given society at a given time (…) which are capable of evolving over time».

Bearing this definition in mind, the Court considers that when examining whether a mark is contrary to morality, a simple and straightforward analysis of the sign is not sufficient, but the moral contexts and norms of society existing at that time must be analyzed.

In relation to the mark ‘Fack ju Göhte’, the Court considers that, although there may a priori be intrinsically vulgar elements derived from the English expression ‘fuck you’, which it could evoke, those elements are not sufficient to establish that the mark is contrary to accepted principles of morality, since the general German-speaking public does not perceive the sign as morally unacceptable.

Furthermore, the Court adds that both the EUIPO and the General Court have not sufficiently examined the context to assess whether the relevant public perceives the mark as a comedy or a simple ‘joke’; and that the relevant nature of the success of comedies among the relevant public cannot be overlooked, since that is an element within the context of society which makes it possible to help determine whether the relevant public perceives the mark as contrary to morality.

For all those reasons, the ECJ establishes that the variability of the concept of «morality» must be accompanied and motivated by (i) a contextualized analysis of the fundamental moral elements of the public to which the mark is directed, (ii) and a consideration of the right to freedom of expression in the field of trade marks.

Artículo 7.1. f) del Reglamento de Marca de la Unión Europea. “Se denegará el registro de las marcas que sean contrarias al orden público o a las buenas costumbres”.
Sentencia del Tribunal General (Sala Sexta) de 24 de enero de 2018. Asunto C-69/17. Constantin Film Produktion GmbH contra Oficina de Propiedad Intelectual de la Unión Europea.
Sentencia del Tribunal de Justicia de la Unión Europea (Sala quinta) de 27 de febrero de 2020. Asunto C-240/18 P. Constantin Film Produktion GmbH contra Oficina de Propiedad Intelectual de la Unión Europea.

AGUILAR & REVENGA Patentes y Marcas

Pere Ramells Higueras