I'm Offended! - Advocate General Bobeck Opines on When a TM is Contrary to Morality or Public Policy

Morality seems to be the topic of the day on this blog, having recently written about the US Supreme Court case relating to the registration of immoral trademarks. While this writer will is not by any means the 'morality police', it is an important topic to discuss, albeit unusually so in connection with intellectual property. Similarly to US legislation, many other jurisdictions prevent the registration of trademarks that contravenes morality, including in Europe. In the light of this, what makes a trademark contrary to morality, and when can the courts reject those marks? Luckily the CJEU is facing this very question, and Advocate General Bobeck gave his take on the matter very recently.

The case of Constantin Film Produktion GmbH v EUIPO concerned the registration of the name "Fack Ju Göhte" (EUTM 13971163) by the film company, which is a very successful German comedy. The company, naturally, wanted to register the mark due to this success, but the application was rejected by the EUIPO due to it being contrary to "accepted principles of morality". Constantin then appealed the rejection, which ended up going all the way to the CJEU.

A trademark application can be rejected under Article 7(1)(f) of the CTM Regulation if it is "...contrary to public policy or to accepted principles of morality". The Advocate General therefore had to opine on when a trade mark application is contrary to public policy or to accepted principles of morality, and what the relevant test is in determining that.

The first thing considered by the AG was the relationship between trademarks and the freedom of expression. The AG set out that, even though the registration of trademarks is a commercial activity by nature, it by no means limits the applicability of the freedom of expression to trademarks, and is further codified by the Regulation as a part of trademark law. He further set out that "…although freedom of expression, as well as other fundamental rights potentially at stake, must be taken into account in the overall balancing exercise, the protection of freedom of expression is not the primary goal of trade mark protection". One can agree with this, since trademarks, while clearly an important expression of a particular brand, are primarily focused on showcasing the quality of a product and ensuring its origin to the consumer; not to make statements for the sake of it.

The AG then moved onto consider the relationship between public policy and accepted principles of morality. In practice, the terms have been considered both interchangeably and separately, which leaves the option open for the CJEU to determine how exactly they should be considered.

In defining public policy, the AG set out that it means "…a normative vision of values and goals, defined by the relevant public authority, to be pursued now and in the future", i.e. the legislature's attempt to solidify the normative values of society at that time. Accepted principles of morality, however, are "…values and convictions currently adhered to by a given society, set and enforced by the prevailing social consensus within that society at a given time", which contrasts as a less guided sense of what is right, but how society at large feels about issues. The distinction therefore is a top-down v bottom-up approach to public morality, with the former being a more objective measure, and the latter a subjective one.

When relying on either one of the above grounds, the AG considered that the EUIPO must therefore establish, with references to the prevailing perception among the relevant public, why they believe that a given sign would offend those principles.

The AG considered that the public relevant to the matter at hand would be a general and German-speaking one, and that any public policy or morality considerations would have to be made in the light of that fact. Vulgarity in one language, here English, would not therefore necessarily be considered such by non-English speakers. Additionally, any assessment by the EUIPO cannot be made solely and exclusively looking at the word sign, in isolation from the broader societal perception and context, if any evidence for such exists.

In this matter the name "Fack Ju Göhte" was fully authorized to screen with the name by the German authorities with no age restrictions. They clearly therefore considered the name to not be vulgar; contrary to the findings of the EUIPO. This national context is important, which should be taken into account by the EUIPO. If the EUIPO wants to depart from this the standard of proof is raised, and in this case they failed to prove otherwise. The first ground of appeal consequently failed according to the AG.

The AG also criticized the EUIPO for a lack of consistency in its decision-making, and for failing to explain why this application's outcome was different to previous decisions (including in Die Wanderhure).

The opinion is very thorough and convincing, and it is very likely that the CJEU will follow the AG's well-reasoned view on the matter. Any rejections by the EUIPO over a contravention of morality should be consistent in their approach, and the CJEU's clarification will hopefully bring them to this outcome. This writer will wait for the CJEU's ultimate decision patiently.