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Trademarks and swearing: an interesting case

Pubblicato in Intellectual Property
da Daniele Camaiora
Home > Trademarks and swearing: an interesting case

In a ruling on 27 february, the court of justice of the european union has once again addressed the issue of morality (and the relationship between trademarks and swearing words).

As lawyers specialising in litigation and trademark registration, we have often had to deal with “borderline” submissions from Clients. Readers of our articles will have noticed that the theme is, to some extent, recurring. Among others, we recall the following articles: “Mafia at the table? No, thanks.“, “Trademark contrary to public order: a NOT surprising judgement“.

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…

Defending applicants against opposition to the registration of an EU trademark is one of our dedicated services in the trademark registration area of activity.

The film background: “Fuck you, Prof!”

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 ‘swear words’ and trademarks (according to the euipo and the eu court)

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 position of the EU Court of Justice

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:

  • the great success of the movie;
  • the total absence of controversy over the title;
  • the fact that the title of the comedy had received all the necessary authorisations (including suitability for a young audience);
  • as well as the fact that it had been included in the Goethe-Institut’s educational programme!

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.

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Publication date: 6 April 2020
Last update: 23 December 2021
Avv. Daniele Camaiora

Avvocato Daniele Camaiora

Senior Partner dello studio legale Canella Camaiora, iscritto all’Ordine degli Avvocati di Milano e Cassazionista, appassionato di Nuove Tecnologie, Cinema e Street Art.
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