On some occasions, we have had to express ourselves by drafting opinions on the eligibility for registration of trademarks containing swear words. On other occasions, we have had to defend them…. After all, at a time in history when it is increasingly difficult to come up with original ideas, pushing ” to the limit ” is obviously tempting…
The case we discuss today originated in 2013, when the film company Constantin Film produced and distributed the comedy “Fack Ju Göthe” in German cinemas. The film was also distributed in Italy, about two years later, with an equally unpoetic ‘Fuck you, prof!’.
The film is a real box-office hit in Germany (it was the most-watched film in 2013). So much so that – in 2015 – Constantin Film decided to produce a sequel and register the title of the comedy as an EU trademark (to mark a wide range of goods and services).
The sign in question, as mentioned, is filed before the EUIPO, which refuses the trademark application on the basis of Article 7(1)(f) of Regulation 207/2009, considering it to be against public decency: according to the examiner of the case, the pronunciation of the words “Fack ju” is identical to that of the English expression “Fuck you” and thus turns into an insult (a swear word), which also offends the memory of the renowned man of letters Johann Wolfgang von Goethe (“Göhte”, in the slang of the poster).
Constantin Film, persuaded of their own reasons, appeals the EUIPO’s decision, which is upheld in its entirety first by the Fifth EUIPO Board of Appeal and subsequently by the General Court of the European Union (judgment of 24 January 2018 – T-69/17).
The film company did not give up and finally appealed to the Court of Justice. Constantin Film challenged the misinterpretation of Article 7(1)(f) of Regulation 207/2009 (‘trademarks contrary to public policy or morality’). Constantin also criticised the insufficient appreciation of all the evidence to the real perception of the trademark by the public.
The Court accepted the conclusions of Attorney Michal Bobek and reversed the previous decisions: EUIPO certainly has a role to play in the protection of the concept of ‘morality’ (although this is not its main task), but the refusal to register a trademark on the basis of an infringement of morality must be decided with reference to a specific social context, at a specific historical moment; it cannot be limited to taking into account only the sign in itself.
The Court pointed out that, in previous instances, due consideration had not been given to:
Clearly, the target audience does not perceive the title of the movie as contrary to decency simply because it contains a swear word. Nor as an insult to the memory of the great German writer Johann Wolfgang von Goethe. The EUIPO will therefore have to rule again on the application for registration as a trademark of ‘Fack Ju Göthe’, taking note of the guidance of the Court of Justice.
Avvocato Daniele Camaiora