A recent decision of the European Court of Justice overturned decisions of the European Union for Intellectual Property and the General Court which had found that the trademark FACK JU GÖHTE was shockingly vulgar and in violation of public morality. The EU decision is consistent with recent decisions of the US Supreme Court and may represent a trend in cases of this type. These decisions emphasize that questions of this nature need to be decided objectively based on evidence not the taste of one examiner or a judge. Freedom of expression must be considered and is an important consideration.
The trademark applied for is the title of a German comedy film produced by Constantin Film Produktion GmbH. The film was one of the most successful films of 2013 in Germany. Two sequels to the film were later produced and released in theatres under the titles ‘Fack Ju Göhte 2’ and ‘Fack Ju Göhte 3’ in 2015 and 2017. Several million people saw the film when it was released in cinemas.
European legislation provides that a trademark shall not be registered if the mark is contrary to accepted principles of morality. When making this assessment the examiner is directed to examine the relevant facts on his or her own motion. The legislation also contains a direction it should be applied in a way that ensures full respect for fundamental rights and freedoms including freedom of expression.
On appeal from the examiner’s refusal the General Court concluded that that public would assimilate that mark to the English phrase ‘Fuck you' along with the surname Goethe. The different spelling resulted from a phonetic transcription in German of those terms. The phrase was intrinsically vulgar and adding the element ‘Göhte’ did not lessen its vulgarity. The Court concluded the examiner correctly found that the English expression ‘Fuck you’ — and the mark applied for as a whole — were inherently vulgar and liable to offend the relevant public.
Decision of the European Court of Justice
The applicant appealed to the Court of Justice, the highest court in the European Union. The court allowed the appeal.
The Court started its analysis by considering the ground of refusal. They said that the concept of ‘accepted principles of morality must be interpreted in the light of its usual meaning and the context in which it is used. The concept refers to the fundamental moral values and standards to which society adheres at a given time. These values and norms, which are likely to change over time, should be determined according to the social consensus prevailing at the time of the assessment. In determining whether the mark is morally unacceptable, account should be taken of the social context, including, where appropriate, the cultural, religious or philosophical diversities.
The examination requires an examination of all the elements specific to the case to determine how the relevant public would perceive such a sign if it were used as a trademark for the goods or services in issue. It is not sufficient that a sign would be regarded as in bad taste. It must be perceived by the public as contrary to the fundamental moral values and standards of society.
The examination must be based on the perception of a reasonable person with average thresholds of sensitivity and tolerance, considering the context in which the mark may be encountered. Elements such as legislation and administrative practices, public opinion and, where appropriate, how the public has reacted in the past to the mark or similar marks, and any other factor which may make it possible to assess the perception of that public, are relevant.
The General Court erred in confining itself to an abstract assessment of the mark. There was no reference to any concrete evidence to plausibly explain why the German-speaking public would perceive the mark as contrary to fundamental values and standards of society.
Contextual elements capable of shedding light on how the public perceived that mark should have been considered but were not. These elements included the great success of the comedy of the same name amongst the German-speaking public, that the title does not appear to have caused controversy, access to the film by young people had been authorized and the Goethe Institute — which is the cultural institute of the Federal Republic of Germany, tasked with promoting knowledge of the German language — uses it for educational purposes.
Finally, the General Court failed to consider freedom of expression. In the field of art, culture and literature, there is a constant concern to preserve freedom of expression which does not exist in the field of trademarks. Freedom of expression must be considered when applying the legislation.
Position of the Courts in the US and Canada
In the US there is a bar against the registration of trademarks that consist of “immoral or scandalous” matter. The US Supreme Court found that the bar was unconstitutional as violating free speech. In addition, the court said that the reference to “immoral or scandalous” was substantially overbroad. There are many immoral and scandalous ideas (even more than there are swearwords) and the legislation covers them all. This violated the right to free speech.
In Canada, paragraph 9(1)(j) of the Trademarks Act prohibits the adoption, which includes use and application for registration, of any scandalous, obscene, or immoral word or device in connection with a business as a trademark or otherwise. There are only a few cases that have considered the subsection. They suggest that in applying the paragraph the critical issue is to determine what are the current acceptable standards and what would be scandalous, obscene, or immoral “by some people by no means few in number”.
Generally, decisions under the criminal law relating to obscenity should act as a guide in deciding whether a work is obscene. In a leading case, it was said that one must be especially vigilant against making personal tastes or prejudices into legal principles. The standards of the community are not set by those of the lowest taste or interest. Nor are they set exclusively by those of rigid, austere, conservative, or puritan taste and habit of mind. Something approaching a general average of community thinking and feeling must be discovered. Community standards must be Canadian. In cases close to the borderline, tolerance is to be preferred to proscription.
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These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.