The broader teachings of the CJEU 'Fack Ju Göhte' decision: trade marks, freedom of expression, and ... other IP rights
In late February, the Court of Justice of the European Union (CJEU) issued its long-awaited [the Opinion of Advocate General (AG) Bobek, on which see here, had been released in July 2019] judgment in Constantin Film, C-240/18 P, aka the Fack Ju Göhte case concerning the interpretation of the morality absolute ground in EU trade mark (EUTM) law.
The decision is both interesting and important for a number of reasons, including trade mark law, the role of freedom of expression, and also ... copyright.
Let’s see, first, what happened and, then, what the implications of the ruling are.
Can the sign ‘Fack Ju Göhte’, which is also the name of a successful German comedy (followed by two sequels) be registered as an EUTM?
Things have not proved easy for this application, initially filed in 2015 for a variety of goods and services in various classes under the previous Regulation [this absolute ground has however remained unaltered after the 2015 reform]. The EUIPO examiner refused registration on grounds that the sign applied for would be contrary to ‘accepted principles of morality’ under Article 7(1)(f) EUTMR.
The wording of this absolute ground, which cannot be overcome by, e.g., inherent or acquired distinctiveness of the sign at hand, states that:
1. The following shall not be registered: [...] (f) trade marks which are contrary to public policy or to accepted principles of morality
Subsequently, also the EUIPO Fifth Board of Appeal and the General Court (T‑69/17) upheld the initial EUIPO decision.
A final appeal to the CJEU followed.
In his well-reasoned Opinion (which also offers valuable insights into the role of freedom of expression in trade mark law), AG Bobek advised the CJEU to to set aside the General Court's judgment and annul the decision of the Fifth Board of Appeal.
This is indeed what the Court did.
The Court began its analysis noting that the concept of ‘accepted principles of morality’ is not defined in the law. As such, it must (unsurprisingly) be interpreted in the light of its usual meaning and the context in which it is generally used.
Agreeing with the AG, the Court further observed that:
that concept refers, in its usual sense, to the fundamental moral values and standards to which a society adheres at a given time. Those values and norms, which are likely to change over time and vary in space, should be determined according to the social consensus prevailing in that society at the time of the assessment. In making that determination, due account is to be taken of the social context, including, where appropriate, the cultural, religious or philosophical diversities that characterise it, in order to assess objectively what that society considers to be morally acceptable at that time.
Moreover, [it] requires an examination of all the elements specific to the case in order to determine how the relevant public would perceive such a sign if it were used as a trade mark for the goods or services claimed.
In that connection […] it is not sufficient for the sign concerned to be regarded as being in bad taste. It must, at the time of the examination, be perceived by the relevant public as contrary to the fundamental moral values and standards of society as they exist at that time.
In order to establish whether that is the case, the examination is to be based on the perception of a reasonable person with average thresholds of sensitivity and tolerance, taking into account the context in which the mark may be encountered and, where appropriate, the particular circumstances of the part of the Union concerned. To that end, elements such as legislation and administrative practices, public opinion and, where appropriate, the way in which the relevant public has reacted in the past to that sign or similar signs, as well as any other factor which may make it possible to assess the perception of that public, are relevant. [at -]
In brief, the concept of ‘accepted principles of morality’:
- should be narrowly defined, in that only what is both ‘fundamental’ and in accordance with the ‘social consensus’ would qualify as such (in this sense, bad taste is not enough);
- may change over time;
- is to be assessed objectively, the benchmark being the perspective of a reasonable person with average thresholds of sensitivity and tolerance; and
- by taking into account all relevant factors at hand.
It follows that:
The examination to be carried out cannot be confined to an abstract assessment of the mark applied for, or even of certain components of it, but it must be established, in particular where an applicant has relied on factors that are liable to cast doubt on the fact that that mark is perceived by the relevant public as contrary to accepted principles of morality, that the use of that mark in the concrete and current social context would indeed be perceived by that public as being contrary to the fundamental moral values and standards of society. [at ]
|*no caption needed*|
In the present case, the relevant public (i.e. the German-speaking general public in Germany and Austria) would assimilate the mark, written with a different spelling resulting from a phonetic transcription in German of those terms, to the English phrase ‘fuck you’ along with the surname ‘Goethe’.
The “intrinsically vulgar” expression ‘fuck you’ could be used, not just with a sexual connotation, but also “to express anger, mistrust or contempt for a person.”
According to the General Court, the fact that several millions of people had watched the film in cinemas would not mean that “the relevant public would not be shocked by the mark applied for”. The CJEU disagreed.
The General Court should have not conducted its assessment in abstracto, but should have rather taken into account:
- the great success of the comedy of the same name amongst the German-speaking public at large;
- the fact that its title does not appear to have caused controversy;
- access to it by young people had been authorized; and
- the Goethe Institute (the cultural institute of the Federal Republic of Germany, active worldwide and tasked, inter alia, with promoting knowledge of the German language) uses it for educational purposes.
All the above suggests that “the German-speaking public at large does not perceive the word sign ‘Fack Ju Göhte’ as morally unacceptable”.
As mentioned, the CJEU decision is important for a number of reasons, including in relation to trade marks, the role of freedom of expression (including in a commercial setting), and other IP rights.
Starting with the trade mark law, the judgment emphasizes the need for a multi-factor assessment of a sign in order to determine whether it is actually contrary to ‘accepted principles or morality’ (I would say that the same is also true with regard to the ‘public policy’ assessment under Article 7(1)(f) EUTMR).
It follows that both the consideration and the application of this absolute ground should be rather characterized as relative (meaning: context-specific).
In this sense, absolut(ist) statements like those found in earlier case law – including recently in the General Court decision in La Mafia Franchises, T-1/17 [Katpost here] – that “when a sign is particularly shocking or offensive, it must be regarded as being contrary to public policy or to accepted principles of morality, irrespective of the goods and services for which it is registered” should be (thankfully) significantly scaled down.
In La Mafia Franchises, the General Court suggested that the assessment is to be conducted having regard “to the intrinsic qualities of the mark in question and not to circumstances relating to the conduct of the person applying for the trade mark” [at , also referring to several other decisions].
This approach is incorrect.
The CJEU decision has also the merit of bringing morality (and, I would argue, also public policy) back to where it belongs, ie an absolute ground that should be only considered in exceptional cases.
|One of the ads |
at issue in Sekmadienis
Fundamental rights: freedom of expression
From a fundamental rights perspective, the decision is also in line with recent case law of the European Court of Human Rights (ECtHR).
Readers might for instance recall the recent judgment in Sekmadienis Ltd v Lithuania [Katpost here], in which the ECtHR considered that a prohibition to use in advertising the image of Jesus and Mary on grounds of public morals should be regarded as an undue compression of the applicants' own freedom of expression under Article 10 ECHR.
Although that Court considered that the Lithuanian Government’s interference with the applicants’ freedom of expression under Article 10(2) pursued a legitimate aim, it concluded that such interference was not necessary in a democratic society.
Indeed, the expressions at issue – despite that they had a commercial purpose and were not intended to contribute to any public debate concerning religion or any other matters of general interest – “at the outset … do not appear to be gratuitously offensive or profane, nor do they incite hatred on the grounds of religious belief or attack a religion in an unwarranted or abusive manner”. In this sense, the Lithuanian authorities not explained “why the reference to religious symbols in the advertisements was offensive, other than for the very fact that it had been done for non-religious purposes”.
The ECtHR ruled that the Lithuanian authorities had failed to strike “a fair balance between, on the one hand, the protection of public morals and the rights of religious people, and, on the other hand, the applicant company’s right to freedom of expression.”
In line with the Opinion of AG Bobek and also the wording of the EUTMR (see recital 21), the CJEU decision acknowledges that freedom of expression does indeed play a role in trade mark law.
|The works at issue in Deckmyn|
Other IP rights: copyright and parody
The Fack Ju Göhte decision also offers valuable guidance in fields of IP that, like copyright, do not envisage express morality-based limitations, at least at the EU level (moral rights – notably the right of integrity - require a different discourse, as there is no formal EU harmonization in this regard).
In particular, the judgment might contribute to shedding light on a number of concepts, including that of parody under Article 5(3)(k) of the InfoSoc Directive.
So far, the concept of parody in CJEU case law has only been considered in Deckmyn, C-201/13 [Katposts here; see also here for an extended commentary I wrote a few years ago].
In that decision, the Court held that a parody that conveys a message that is discriminatory/racist may not be eligible for protection. Stating otherwise would contradict the requirement of a fair balance between the rights and interests of the author of the parodied work and the rights of the parodist. In these instances, the person who holds the rights to a work has a legitimate interest in ensuring that the work protected by copyright is not associated with the message conveyed by its parody.
This aspect is one of the most ambiguous aspects of the decision.
The Court failed to elaborate on both (1) the legal grounds a copyright holder could use to object to a parody of this kind (the three-step test? the unharmonized moral right of integrity if the rightholder is also the author?) and (2) how the assessment is to be conducted.
The judgment in Constantin Film appears to offer a valuable interpretative aid with regard to (2), also because this part of the Deckmyn decision implicitly endorses the Opinion of AG Cruz Villalón in that case [Katposts here and here].
The AG had reasoned that, although a parody cannot be forbidden just because the author of the parodied work does not approve of it, parodies that transmit a message that is radically contrary to the deepest, fundamental, values of the society upon which the European public space is built should be prohibited [at ].
It appears that the type of assessment recommended by AG Cruz Villalón - and implicitly endorsed by the CJEU although without any particular elaboration - is substantially identical to that adopted (with greater elaboration) by the CJEU in Constantin Film.
As such, the latter might also serve to appreciate whether and to what extent a 'disparaging' parody is to be considered protected by the relevant copyright exception or, instead, an infringement.
The broader teachings of the CJEU 'Fack Ju Göhte' decision: trade marks, freedom of expression, and ... other IP rights Reviewed by Eleonora Rosati on Saturday, March 14, 2020 Rating: