“Fack Ju Göhte” TM appeal should be heard, says AG
The EU General Court erred in its determination that the trademark “Fack Ju Göhte” should not be registered by a film production company because it was too offensive, an advocate general (AG) of the Court of Justice of the European Union ( CJEU) has said.
In his opinion published yesterday, July 2, AG Michal Bobek said the General Court erred because it failed to consider the context surrounding the applied-for mark in its assessment.
In 2015, German company Constantin Film Produktion sought to register the trademark ‘Fack Ju Göhte’ at the European Union Intellectual Property Office ( EUIPO), but the application was rejected on the grounds it was contrary to “accepted principles of morality”.
Constantin Film appealed the decision, arguing that the public associates the phrase, which is the name of a film, with entertainment.
But the General Court upheld the EUIPO’s ruling, noting that the average consumer will observe a similarity between the applied-for mark and the English expression “fuck you”.
The present appeal asked the AG to clarify when a trademark application can be considered to be “contrary to public policy or to accepted principles of morality”.
It also asked the AG to specify, in the context of the present case, the scope of the EUIPO’s obligation to state reasons when it wishes to adopt a decision which departs from previous case law.
In its appeal, Constantin Film had argued that the General Court breached the principle of individual examination because it did not examine the sign applied for, ‘Fack Ju Göhte’, but a different sign, namely ‘Fuck you, Goethe’.
In addition, Constantin Film claimed that even the expressions ‘Fuck’ and ‘Fuck you’ have lost their vulgar meaning due to the evolution of language in society.
“There is no general refusal to register statements based on those terms, as evidenced by the registration of trademarks such as ‘Fucking Hell’ and ‘Macafucker’,” the production company argued.
It also said the General Court applied the law “too broadly” when it considered that the word sign ‘Fack Ju Göhte’ is “intrinsically vulgar”.
In its judgment, the General Court stated that the concepts of ‘public policy’ and ‘accepted principles of morality’ are different but they often overlap. It said that therefore, the EUIPO is not obliged to distinguish between the two.
But, the AG did not agree. He said the fact that the two concepts overlap did not mean there was no obligation to distinguish between them.
Additionally, the EUIPO had argued that its office has a role to play in the protection of public policy and morality. The AG said that although he agreed with the EUIPO, there is “one important caveat”.
He said that while the EUIPO does have a role to play in the protection of public policy and morality, this is certainly not the key or predominant role of the EUIPO and of EU trademark law.
He said the absolute grounds of refusal on the basis of protecting the public “effectively acts as a safety net”, but it is certainly not an aim in and of itself.
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