Simić v. Bosnia and Herzegovina
Bosnia and Herzegovina
Closed Expands Expression
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The Fifth Chamber of the Court of Justice of the European Union (CJEU) set aside the judgment of the General Court delivered on January 24, 2018 which affirmed European Union Intellectual Property Office’s (EUIPO) action to refuse a grant of protection for the German word sign ‘Fack Ju Göhte’ (translated in English as ‘Fuck You Goethe). The appellant Constantin Film had sought the registration of the word sign as an EU trade mark designating various goods and services, in particular cosmetics, jewellery, office items, travel and sporting goods, games, foodstuffs and beverages. Remarkably, the word sign was also the title of the blockbuster German film comedy produced by the appellant. EUIPO refused to grant the registration on the ground that the German-speaking public connoted the expression ‘Fack Ju’ to the English phrase ‘Fuck You’, and hence, deemed it as vulgar and offensive. This, in the examiner’s eyes, infringed accepted principles of morality and was ineligible for grant of the trade mark. Annulling the decision of the EUIPO and the judgment of the General Court, CJEU ruled that both the decision and the judgment failed to take sufficient account of a number of contextual factors which indicated, irrespective of the assimilation of the terms ‘Fack Ju’ and ‘Fuck You’, that the title in question was not perceived as morally unacceptable by the German-speaking public. Furthermore, the Court noted that there was no concrete evidence to explain the perception of the word sign ‘Fack Ju Göhte’ as going against the fundamental moral values and standards of society when it is used as a trade mark.
In 2015, the appellant, a film production company, filed an application for registration of the EU Trade Mark for the word sign ‘Fack Ju Göhte’ with the defendant European Union Intellectual Property Office (EUIPO). The appellant had earlier produced a German film comedy of the same title (in 2013, along with its two sequels in 2015 and 2017 respectively) which was widely regarded as one of the most successful films of 2013 and seen by more than 7.4 million viewers at the time of cinema release. Accordingly, it sought registration under several categories, but was refused the application of registration pursuant to the provisions of the Regulation 207/2009, specifically Article 7(1)(f) (dealing with refusal of registration of trade marks contrary to public policy or accepted principles of morality) read in conjunction with Article 7(2).
Aggrieved by the decision of the defendant, the appellant filed a notice of appeal with EUIPO on November 5, 2015, which was subsequently dismissed. On February 3, 2017, the appellant brought an action for annulment of the decision of the EUIPO before the General Court, alleging infringement of Article 7(1)(f) and 7(1)(b) of the Regulation 207/2009. The Court, however, dismissed the action in entirety.
In an appeal before the CJEU, the appellant raised three grounds:
Constantin Film Produktion argued that the expressions ‘Fuck’ and ‘Fuck you’ no longer hold their vulgar connotations due to evolution of the language, and therefore, there can be no general refusal relating to accepted principles of morality on absolute grounds under Article 7(1)(f) (the appellant evidencing this argument by registration of signs such as ‘Fucking Hell’ and ‘MACAFUCKER’ as EU Trade Marks). It also contested that by failing to examine the mark ‘Fack Ju Göhte’, the General Court breached the principle of individual examination and in the process, failed to apply the grounds of refusal “restrictively and objectively”. Finally, it also submitted that the word sign is rather understood as “designating unpopular school subjects, or a harmless, childlike and playful personality expressing frustration at school” [page 4] with insufficient evidence of the mark being considered as vulgar or offensive by the German-speaking public in any way.
EUIPO, on the other hand, claimed that the underlying objective of grant of exclusive rights by virtue of a trade mark is to prevent undistorted competition and not uphold freedom of expression. It argued that the consumer would be able to distinguish between the film title and the word sign and perceive them in different ways, making it impossible for the trade mark to be perceived as a ‘joke’ (as the appellant had contested). In essence, the basis of claims made by EUIPO was that the consumer perceives the trade mark as a ‘whole’, which in the present case being intrinsically vulgar and offensive, makes for a “manifestly obscene trade mark” contrary to accepted principles of morality.
Advocate General Bobek in a comical opinion delivered on July 2, 2019 proposed to set aside the decision of the General Court to refuse to register the word sign, noting that the offensive nature of the trade mark was “not proved”. While stating that respect for fundamental rights is a prerequisite for any EU law, the Opinion of the Advocate General extended the application of freedom of expression in trade mark law, observing that (1) application of FoE in trade marks has been explicitly confirmed by the preamble of Regulation (EU) 2015/2424; (2) commercial nature of potential activity cannot exclude protection of fundamental rights; and (3) the use of FoE in trademarks is consistent with previous case law and EUIPO’s decision-making practice. The final judgment of the CJEU has followed a similar line of reasoning, annulling the decision of EUIPO and mandating fresh decision on the application for registration made by the appellant.
The Fifth Chamber of the Court delivered a per curium final judgment in the matter. The principle issue before the CJEU was whether the mark applied for infringes the accepted principles of morality in accordance with the interpretation and application of Article 7(1)(f) of Regulation No 207/2009. Article 7(1)(f), to recall from the discussion earlier, deals with refusal of registration of trade marks contrary to accepted principles of morality or public policy.
The Court began by observing the meaning of the concept ‘accepted principles of morality’, sourcing the Opinion of Advocate General Bobek [point 77] to note that it refers to “fundamental moral values and standards to which a society adheres at a given time…and determined according to the social consensus prevailing in that society at the time of assessment…determined by appropriate cultural, religious or philosophical diversities”. By doing so, the Court attached a twin test to the application of Article 7(1)(f), holding that apart from being regarded in “bad taste”, the mark must also be perceived by the relevant public as contrary to the “fundamental morals and standards of society as they exist at that time” [page 6].
The Court noted that an examination of the aforementioned twin tests must be subject to the reasonable person standard, thereby making the reaction of the relevant public (in this case, the German-speaking population) to that sign/similar signs in the past and its use in the concrete and current social context as a “relevant” criteria to assess the perception of that public. This was a striking observation by the Court, forming the keystone for the Court’s decision to hold that perception of the word sign is not against the fundamental morals and standards of the society.
Coming to the actual perception of the mark, the Court varied from the General Court’s ruling (in paragraph 18) that the relevant public will assimilate the mark with its English-equivalent ‘Fuck you’, which in its original meaning had a sexual and vulgar connotation. The General Court had also noted that the addition of the element “Göhte” at the end of the sign makes no difference in attenuating its vulgarity or altering the perception of the insult, and was liable, as a whole, to offend the general public. However, CJEU declared that the ruling of the General Court failed to meet the standards required by Article 7(1)(f) and confined itself to “an abstract assessment of that mark and of the English expression to which the first part of it is assimilated by the public”, while also disregarding the contextual elements which could explain the perception of the relevant public. As per the Court, these factors included, inter alia, the success of the comedy film, the fact that its title caused no controversy amongst the German-speaking public, the access to the comedy by young people and its use by Goethe Institute for educational purposes.
It must, however, be noted that the success of the film does not automatically prove the social acceptance of the title, but is nevertheless, an indication which much be assessed in light of relevant factors to determine the perception, as per the Court.
Perhaps most importantly, the Court’s ruling that Article 11 of the Charter of Fundamental Rights enshrining the principle of freedom of expression must be taken into account while applying the accepted principles of moral criteria highlights the increasing importance of freedom of expression elements in the intellectual property rights arena. This finding becomes more interesting in light of the fact that it goes contrary to General Court’s ruling which instead seeks to restrict “the concern to preserve freedom of expression” to the field of art, culture and literature, and not to the field of trade marks.
After a careful consideration of the aforementioned factors and reasons, CJEU held that the mark applied for was not perceived as “morally unacceptable” by German-speaking public, that there was a difference in perception of ‘Fuck You’ by German-speaking public, as against the perception of the same term by English-speaking public, and that the mark applied for does not consist of the English phrase but a phonetic transcription of the same in German.
Decision Direction indicates whether the decision expands or contracts expression based on an analysis of the case.
The judgment is positive for freedom of expression since it ensures that the interpretation and analysis of Article 7(1)(f) in refusing registration of marks on the grounds of public order or accepted principles of morality is subject to the contours of the freedom of expression principles enshrined in Article 11 of the EU Charter of Fundamental Rights. The Court has emphasized strongly on the application of the law in a way which guarantees full respect for fundamental rights, and in particular, the freedom of expression.
Global Perspective demonstrates how the court’s decision was influenced by standards from one or many regions.
Refusal of registration of trade marks contrary to accepted principles of morality or public policy
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