Date: 10 October 2019
A sign that corresponds to a film title can be registered as an EU or UK trade mark, provided it meets the requirements for registration. One hurdle is that the film’s title needs to be distinctive; in other words, it needs to be able to identify the commercial origin, thus enabling the consumer who purchases the film or DVD to repeat the experience if positive, or to avoid if negative. However, even if your film title is distinctive, it can still offend the EUIPO…
In April 2015, Constantin Film applied to register the name of its successful German comedy “Fack Ju Göhte” as a EUTM. However, the EUIPO refused the registration as it considered the word sign to be contrary to “accepted principles of morality” pursuant to Article 7(1)(f) EUTMR. The Board of Appeal and General Court shared the EUIPO’s sensibilities, finding that the average consumer (a German-speaking consumer in Germany and Austria) would perceive the word element “Fack ju” as identical to the English expression “Fuck you” and that – even if the relevant public did not attribute sexual connotations to the expression “Fuck you” - it was still an insult that was not only in bad taste, but also shocking and vulgar. As for the additional element ‘Göhte’, in the Board’s view, the fact that the respected writer Johann Wolfgang von Goethe was insulted posthumously in such a degrading and vulgar manner – and with incorrect spelling - did nothing to temper the offensive character of the insult “Fack Ju Göhte”.
Constantin Film argued that the mark was understood “as a joke” about “the students’ occasional frustration with school and uses, for this purpose, a selection of words taken from teenage slang”. In response, the Court said that “in the field of art, culture and literature, there is a permanent concern about preserving freedom of expression that does not exist in the field of trade marks”, and appealed to the CJEU. At the time of writing, the appeal hearing before the CJEU is pending, but Advocate General (AG) Bobek has issued his Opinion (Constantin Film Produktion v EUIPO; Case C-240/18).
The AG began by observing that the works of Johann Wolfgang von Goethe had not met with universal acclaim at the time of publication; in particular, Die Leiden des jungen Werthers (The Sorrows of Young Werther) was banned in a number of German territories and elsewhere for being (in the words of the Danish Chancery to the Danish King) a work that “ridicules religion, embellishes vices, and can corrupt public morality”. As the AG said “it is not without a dose of historical irony that more than two hundred years later, there is still a threat to public morality associated with (a version of the family name) Goethe”.
At various stages of the procedure, Constantin Film drew attention to the fact that the film had been a great success in German-speaking countries without the title having stirred much controversy, and had even been incorporated into the learning programme of the Goethe Institut.
The AG concluded that the Court had erred in law by incorrectly interpreting Article 7(1)(f) because it had failed to take into account elements of the context relevant for the assessment as to whether the sign applied for complied with accepted principles of morality. The AG also questioned the Board’s failure to explain why it viewed the disputed phrase as vulgar when it had considered the sign “DIE WANDERHURE” (also the name of a German novel and its film adaptation) to be neither shocking nor vulgar, despite the fact that it referred to a woman offering sexual services for remuneration (see decisn R 2889/2014-4).
The appeal will clarify the legal test for assessing whether a mark applied for is contrary to accepted principles of morality and, therefore, should not be registered on the basis of the absolute ground for refusal set out under Article 7(1)(f) EUTMR.
It will be interesting to see whether the CJEU, which follows the AG’s Opinion in four out of five cases, finds “Fack Ju Göhte” as offensive as the EUIPO, the Board and the Court have done, or whether it decides to agree with AG Bobek to set aside the Court’s judgment and annul the Board’s decision.