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Explicit content: EU Court provides guidance on ‘immoral’ trade marks

15 May 2020

The law around when a trade mark may be rejected on the grounds of being immoral is fairly scant, meaning that the European Court of Justice’s (CJEU’s) judgment in a long running dispute around Constantin Films’ attempt to register a trade mark for the name of its hit 2013 German comedy FACK JU GÖHTE garnered a lot of interest when it was handed down last month.

The trade mark application had been rejected by the examiner at the European Intellectual Property Office (EUIPO), and on appeals to the Board of Appeal and the General Court, on the basis that it was contrary to accepted principles of morality. The applicant appealed to the CJEU.

The lower level decisions had found that the average consumer, despite being German-speaking, would understand the mark to mean “f**k you, Göhte.” The word “f**k” has clear sexual connotations and, even when used instead to indicate anger or contempt, remains intrinsically vulgar and, therefore, immoral.

Constantin Films’ core contention was that the lower decisions had considered the application in a vacuum, that accepted principles of morality “change in time and vary in space,”  and that the courts should have taken due account of the social context including the cultural, religious or philosophical diversities that characterise it in order to assess objectively what the society in question considered to be morally acceptable at the date of trade mark application.

The CJEU agreed with this principle, and found that societal norms should have been taken into account, including the increased acceptance of swearing, the success of the movie Fack Ju Göhte (which had been watched by more than 13 million people), and the use of the movie in education by the Göhte Institute.

The CJEU also criticised the lower courts for leaning too heavily on the English translation to “f**k you, Göhte,” when the relevant public was German-speaking. Finally, the CJEU held that freedom of expression is applicable to trade marks, as it is to more artistic works, contrary to the judgment of the General Court.

This is a notable judgment from both a trade mark and copyright perspective. First, looking at trade marks, it suggests that examiners should pay more attention to the circumstances surrounding an application for a trade mark, rather than considering the mark alone in a vacuum. This is clearly relevant to trade marks rejected on the basis of immorality (where the EUIPO had previously been very strict), but may also bleed into other areas, for example marks rejected on the basis that they consist exclusively of a shape resulting from the nature of the goods.

From a copyright angle, it may give some indication as to the treatment of parodies, for the purpose of the parody defence to infringement. Case law on parody in copyright remains thin on the ground; the 2013 case of Deckmyn remains the leading case.

Deckmyn held that, as part of the analysis, when considering a potentially immoral parody, the rights of the author of the original work, and the rights of the parodist to create a parody, must be balanced fairly. In view of Fack Ju Göhte, it is likely that the Court would also consider public perception and the nature of morality at the time of the parody.

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