Not registrable trademark because contrary to accepted principles of morality? it dependes

All of you imagine that a mark composed of words which are almost identical to the best-known expression of English trash talk should be considered contrary to accepted principles of morality and therefore not suitable to be registered. But is that really the case?

In this case the trademark  is  “Fack Ju Gohte” and I am sure that it recalls you something, both for the “fack Ju” and for the “Gohte”; In fact, both the EUIPO and the General Court considered the same not registrable because contrary to accepted principles of morality, but the EU Court of Justice showed a different opinion (decision of 27 February 2020, C-240/18 P).

Let’s go to see the reasons and let’s try to understand why there are different decisions.

EUIPO decision and General Court judgement stating the sign is NOT able to be registered

EUIPO and General Court, after having verified the identity of pronunciation between “fuck you” and “fack ju”, considered that the two expressions have the same meaning, offensive and trivial, all the more because they are associated with the name (modified but still recognizable) of the famous German writer.

Neither EUIPO nor the EU Court attributed any importance to the fact that the trademark in question reproduced the title of a cinematographic comedy very well known to the German public, which was moreover produced by the same company that filed the application for the registration of the trademark.

The opinion of the Court of Justice on the registration of the trademark

On the contrary, Court of Justice stated that:

“the film was a great success in German-speaking countries, apparently without stirring much of a controversy as to its title; the film title was duly authorised and released for screening to younger audiences; and the positive perception of the film can also be evidenced by its incorporation into the learning programme of the Goethe-Institut”

Court of Justice concludes that: (paragraph 68)

“It should therefore be noted that all of these contextual factors consistently indicate that, despite the assimilation of the terms ‘Fack ju’ to the English phrase ‘Fuck you’, the title of the comedies was not perceived as morally unacceptable by the German-speaking public at large. It should also be noted in that connection that the perception of that English phrase by the German-speaking public is not necessarily the same as the perception thereof by the English-speaking public, even if it is well known to the German-speaking public and the latter knows its meaning, since sensitivity in the mother tongue may be greater than in a foreign language. For the same reason, the German-speaking public also does not necessarily perceive the English phrase in the same way as it would perceive the German translation of it.”

Which lessons can we draw from this judgement?

Two, at least.

Firstly law is not a mathematical formula and that each case must be assessed in the complexity of all its elements: what appears obvious at frist glance may not to be such after careful consideration of all the circumstances.

Secondly, that most of all when you have logically sustainable arguments, it must be rememberde that that there are more degreed of judgements, therefore we invite you to

always evaluate with your trademark lawyer the possibility of continuing in the various degrees of judgement, even when you have had an unfavorable decision.