Background of the case.

On 21 April 2015, the appellant, Constantin Film Produktion, filed an EUTM application before the EUIPO ‘Fack Ju Göhte’ for Classes 3, 9, 14, 16, 18, 21, 25, 28, 30, 32, 33, 38 and 41, which corresponds in addition to the title of a highly famous and recognized German comedy film produced by the appellant. In September 2015, the examiner issued a provisional refusal on the ground that it was contrary to accepted principles of morality.

Being the arguments of the appellant dismissed on the Appeal (before the EUIPO) and General Court proceedings, the appellant brought an appeal before the Court of Justice of the European Union on the following grounds: infringement of Article 7(1)(f) of Regulation No 207/2009; infringement of the principle of equal treatment; and infringement of the principles of legal certainty and sound administration.

To make a long a story short, the appellant states first of all that the trademark has been wrongly assessed by being reviewed as ‘Fuck you, Goethe’ and not as ‘Fack Ju Göhte’. Secondly, the General Court applied the absolute ground for refusal relating to accepted principles of morality too broadly, by stating that the element ‘Fack Ju’ is imbued with an intrinsic vulgarity that cannot be attenuated by the word sign ‘Göhte’. In conclusion, it is argued that the risk that signs might be excluded from registration solely on the ground that they are not to the personal taste of the person carrying out the examination must be avoided. Thirdly, the great success of the aforementioned film shows that in general the German-speaking public, which is the relevant one in this case, understands the humorous nature of the mark applied for. Finally, the appellant states that the General Court erred in law by wrongly balancing the interest of the appellant in obtaining registration of the mark applied for and the interest of the public in not being exposed to marks which are contrary to accepted principles of morality and therefore disturbing, coarse, insulting or even threatening

The Court´s assessment and final decision.

The Court states that in order to determine whether the sign applied for is contrary to accepted principles of morality, it is appropriate to take as a reference the perception of a reasonable person with average thresholds of sensitivity and tolerance, taking into account the context in which the mark may be encountered and, where appropriate, the particular circumstances of the part of the Union concerned.

In that regard, the Court states that, first, it is not at all necessary for the title of a film to be descriptive of its content in order for it to constitute a relevant contextual element for the purpose of assessing whether that title and an eponymous word mark are perceived by the relevant public as being contrary to accepted principles of morality. Furthermore, in acknowledging the success of the film which is the eponymous of the sign applied for, the General Court recognizes that this is at least an indication that such acceptance by the public is a relevant element for the analysis of the case. Accordingly, those elements are indicators that the terms FACK JU GÖTHE will not be morally perceived as unacceptable by the general German-speaking public.

Finally, it is mentioned that the success of eponymous comedies among the relevant public and, in particular, the absence of controversy as regards their title must be taken into account in order to determine whether the relevant public perceives the mark applied for as being contrary to morality and, accordingly, to decide whether that absolute ground for refusal precludes its registration and not to reject that ground after establishing its applicability to the present case.

As a final point, the Court further states that, contrary to what the General Court indicated, it is important to assess the impact on this kind of trademark´s applications on the right to freedom of expression as laid down in Article 11 of the Charter of Fundamental Rights of the European Union, so as to ensure full respect for fundamental rights and freedoms, in particular freedom of expression.

In the light of the foregoing, the Court holds that the decisions of the Board of Appeal of the EUIPO must be annulled on the ground that the absolute ground of refusal was wrongly applied, in as much as the mark is not contrary to accepted principles of morality. The sign in question will therefore be eligible for registration by the EUIPO on the basis that it does not fall under an absolute ground for refusal.

JUDGMENT OF THE COURT OF JUSTICE OF THE EUROPEAN UNION (Fifth Chamber) in Case C-240/18 P of February 27, 2020.