AG Bobek advises CJEU to annul the 'Fack Ju Göhte' decision and distinguish between 'public policy' and 'morality' (and, yes, freedom of expression also matters in trade mark law)

Can the sign ‘Fack Ju Göhte’, which is also the name of a successful German comedy, be registered as an EU trade mark (EUTM)?

Well, things have not proved easy for this application, as the EUIPO initially refused registration on grounds that the sign applied for would be contrary to ‘accepted principles of morality’ as per Article 7(1)(f) EUTMR. Subsequently, also the EUIPO Fifth Board of Appeal and the General Court (T‑69/17) upheld the initial EUIPO decision. 

Now, the case is pending before the Court of Justice of the European Union (CJEU) (C-240/18 P).

This morning, Advocate General (AG) Bobek issued his Opinion and advised the CJEU to set aside the General Court's judgment and annul the decision of the Fifth Board of Appeal.

Let's see how the AG reasoned.

The irony of history

The AG recalled at the outset that Goethe's literary production was not met with "universal acclaim" at the beginning, and that The Sorrows of Young Werther was banned in a number of German territories on morality grounds.

The AG found it ironical that, more than two hundred years later, there is still a threat to public morality associated with Goethe. 

The importance of this case

Irony aside, this appeal is important because it will provide the CJEU with the opportunity to clarify - for the first time - what legal test is to be applied when considering whether to reject an application for a trade mark on the basis of Article 7(1)(f): when can a sign be considered to be ‘contrary to public policy or to accepted principles of morality’? 

In addition, the CJEU will have to provide guidance on the scope of "the obligation on EUIPO to state reasons when it wishes to adopt a decision that could be seen as departing from its previous decisions on similar matters".

To articulate the legal test under Article 7(1)(f), the AG considered the following issues:

• Freedom of expression and its role in trade mark law 
• The concepts of public policy and accepted principles of morality and, in particular, the consequences in terms of evidence and standards of reasoning of the choice to rely on one or the other in refusing to register a trade mark

In his view, consideration of the above would lead to the conclusion that the General Court's judgment should be set aside. However, for the sake of completeness, the AG also deemed it necessary to consider:

• The scope of the obligation to state reasons incumbent upon EUIPO in cases in which it applies the same law to factually similar circumstances, while apparently departing from the approach adopted by it previously in similar cases

Freedom of expression and its role in trade mark law

First, contrary to what the General Court had (surprisingly) held, the AG noted that freedom of expression does indeed play a role in trade mark law, though "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 case, the fact that an activity is commercial in nature does not limit or exclude fundamental rights protection. 

This conclusion is both consistent with case law of the European Court of Human Rights [for a recent instance concerning commercial communication, ie advertisement, see here] and the letter of the law (see Recital 21 in the preamble to the EUTMR).

This said and "[f]ascinating as the issue and the discussion of it in the abstract may be, the question remains as to what exactly that confirmation brings to the solution of the present case." How to balance freedom of expression and the concepts of public policy and accepted principles of morality?

Advocate General Bobek

Public policy and/or accepted principles of morality

Even if 'Fack Ju Göhte' was examined in light of accepted principles of morality, as opposed to public policy, the General Court stated that the concepts of ‘public policy’ and ‘accepted principles of morality’ are different but they often overlap. As a result, the EUIPO would not be obliged to distinguish between the two. 

The AG disagreed:

It does not follow from the fact that both concepts might in some cases overlap that there is no obligation to distinguish between them. Most importantly, however, as can be vividly demonstrated by the present case, the conceptual difference between them has repercussions for what exactly is to be assessed and how, if either concept is to be invoked.

It is true that EU trade mark law poses limitations to the types of signs that can be registered as trade marks, but does not prohibit the use of signs contrary to public policy or morality per se (this is a matter for national laws). 

Article 7(1)(f) vests the EUIPO with the role of protecting public policy and morality.

However, the protection of public policy and morality is certainly not the key or predominant role of EUIPO and EU trade mark law. The absolute ground for refusal in Article 7(1)(f) effectively acts as a safety net, potentially setting limits to the realisation of other aims. But it is certainly not an aim in and of itself.

Turning to the consideration of the concepts of 'public policy' and ‘accepted principles of morality’, the AG considered that, while they overlap, they are not the same thing:

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. Public policy thus expresses the public regulator’s wishes as to the norms to be respected in society. Its content should be ascertainable from official sources of law and/or policy documents. However it is expressed, much like charting a course, public policy must first be set out by a public authority, and only then can it be pursued.
Accepted principles of morality refer, in my understanding, to values and convictions currently adhered to by a given society, set and enforced by the prevailing social consensus within that society at a given time. In contrast to the top-down nature of public policy, they grow from the bottom up. They also evolve over time: but when ascertaining them, the focus is primarily fixed on the past and present. Naturally, in terms of what it wishes to achieve, morality is also normative and prospective, in the sense that that set of rules also has the ambition of inducing and maintaining certain behaviour. 

As also the EFTA court noted in Vigeland, the core distinction between the two concepts lies in how they are established and ascertained. While public policy requires an assessment based on objective criteria, morality relies on subjective values. 

Although the AG did not wish to make "too much of an academic essay out of the distinction between public policy and accepted principles of morality" (😄), the distinction is relevant: in fact, if the EUIPO relies on the accepted principles of morality, it must establish, "with reference to the prevailing perception among the public in question, why it believes that a given sign would offend those principles."

Assessment in the present case

In this case, the EUIPO (endorsed by the General Court) failed to do so.

First, the relevant public was defined too broadly, as also including "people who might possibly have never heard of the film and might understandably be surprised during their weekly shopping to find on the shelf a loaf of bread (Class 30) or laundry product (Class 3) bearing the label ‘Fack Ju Göhte’."

Second, if the relevant public is German-speaking, the intrinsic vulgarity or the offensive nature of the sign must then be examined exclusively with regard to said public, who would possibly not find the sign "intrinsically vulgar or offensive".

Third, the assessment of contrariety to accepted principles of morality cannot be undertaken in isolation from the broader societal perception and context. And indeed the film ‘Fack Ju Göhte’ was authorized to be screened under that title and without restrictions on access for young audiences:

if the respective regulators in German-speaking countries of the European Union had no issues with the title of the film, EUIPO should not then raise them in the process of an eponymous trade mark registration. 

It is true that film release and screening regulation are different from EU-wide trade mark regulation. However, "there is a substantive overlap between such parallel assessments: both frameworks of assessment have as their point of departure the same public and the assessment of morality and vulgarity within that same public at the same, or a very similar, point in time." 

This means, that previous assessments carried out by various national bodies indeed become relevant:

If they exist and are brought to the attention of EUIPO, the assessments of such national bodies, which are no doubt better placed than an EU-wide trade mark office to evaluate what is (im)moral and vulgar at a given time in a given Member State, should be duly taken into account.

All this does not prevent the EUIPO from finding a mark contrary to accepted principles of morality. However, if it wishes to do so, this means that there is a higher standard for the reasoning that must be provided by EUIPO if it wishes to depart from what national bodies ascertained to be the acceptable standards of morality within the same space, with regard to, apparently, the same general public, and at the same time.

In this case, the EUIPO failed to meet such standard.

The EUIPO also failed to explain why the 'Fack Ju Göhte' should have a different outcome than previous decisions (eg, R 519/2015-4). Accordingly, the General Court erred in law when it did not sanction the failure, on the part of EUIPO, to appropriately explain the departure from its past decision-making practice, or to state a plausible reason why the application for the sign at issue had to be decided differently compared to the outcome reached in a similar case.

Comment

The Opinion of AG Bobek is notable, not just for the humorous tone, but also - and possibly more importantly - for the rigour of the analysis. As readers know, the issue of trade marks contrary to public policy/morality has surfaced at different times in different jurisdictions (recently, in the US with Tam and the decision of the US Supreme Court - a few days ago - in Brunetti).

Let's see what the CJEU decides here, but the guidance provided by the AG seems sensible and the Court should follow the distinction proposed between public policy and morality, as well as how the assessment is to be conducted in practice.