Vulgarity is in the eye of the beholder: ‘Fack Ju Göhte’ is capable of trade mark protection

Posted: 23/03/2020

Europe’s highest court, the CJEU, has allowed the registration of ‘Fack Ju Göhte’ as a trade mark. The decision provides clarity on the EU’s approach to risqué marks and will be of particular interest to those seeking to promote their goods or services by reference to an edgy or rebellious image.

‘Fack Ju Göhte’ was first released by Constantin Film Produktion in 2013 and proved such a success that two sequels, Fack Ju Göhte 2 and 3 were released shortly after. The title of the film, set in a German high school, is a German phonetic mis-spelling of the English language insult, directed at Johann Wolfgang von Goethe, a name familiar to many German schoolchildren who are obliged to study his works during secondary school.

Following the success of the first film, in 2015 Constantin Film filed an EUTM application for ‘Fack Ju Göhte’ in respect of a large number of goods and services (including perfumes, jewellery, stationery, clothing, toys, foods, telecommunication services and education services) (the ‘application’). The CJEU’s recent decision set aside a judgment of the General Court and annulled a decision of EUIPO that rejected the application on the basis that it was ‘contrary to accepted principles of morality’ and would cause offence to the relevant public.

The CJEU confirmed that ‘accepted principles of morality’ was a standard which may change over time and vary in space, should be interpreted (taking into account all relevant factors at hand) in the light of its usual meaning, and values and norms prevailing in that society at the time of the assessment, and be assessed objectively by reference to a reasonable person with average thresholds of sensitivity and tolerance (not to the personal taste of the person carrying out the examination). The CJEU took time to emphasise that such an assessment should be carried out in a way that ensures full respect for the fundamental rights and freedoms, and in particular the freedom of expression.

That the films were extremely successful and well-known in Germany, that their titles did not appear to have caused controversy, that they were shown to young people in schools and used for educational purposes by the Goethe Institute (which was set up and is largely funded by the German state to promote the study of German) all suggested that the application was not perceived as morally unacceptable by the German-speaking public at large.

From a procedural point of view, the CJEU was critical of the General Court’s decision and the conclusions it reached without fulfilling its obligations to examine and give reasons for its decision. Separately, the CJEU noted that the perception of the phrase by German-speakers was not necessarily the same as its perception by the English-speaking public, since sensitivity in the mother tongue could be greater than in a foreign language. Therefore, terms which are genuinely contrary to accepted principles of morality in one territory may not be so in territories which do not share the same language.

The decision provides useful clarification to brand owners, particularly those who may wish to test the boundaries of what is socially acceptable in order to promote a risqué brand.

This article has been co-written with Ebi Oni, a trainee solicitor in the commercial, IP and IT team.

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