Back in April 2015, the film studio behind German comedy film “Fack Ju Göhte” did what film studios are expected to do in that situation– they filed a trade mark for the title of their film. This made perfect sense – the sequel to the first instalment (released in 2013) was on its way, and they wanted to protect the IP in the name of their growing franchise.
The EU Intellectual Property Office (EUIPO) had other ideas. It rejected the trade mark application on the grounds that the mark was “vulgar” and in “bad taste”, and was likely to offend Goethe fans, due to its similarity to the English expletive.
The Court of Justice of the European Union disagreed with this puritan approach, and allowed the applicant’s appeal of the rejection. In its judgment, the CJEU stated that “[a]lthough, in its original meaning, the English phrase ‘Fuck you’ had a sexual connotation and was vulgar, it could also be used in a different context to express anger, mistrust or contempt for a person” intoned the court in its judgment.
Why should ju care?
Beyond the childish (but immense) satisfaction of seeing swear words in court papers, there are some important lessons which can be learned from this case.
Most commentators would point to the fact that the CJEU gave a lot of importance to the fact that a large number of people had watched the film and that the general consensus was that “[the title of the comedies was not perceived as morally unacceptable by the German-speaking public at large”. It was also interesting to find that, despite English being the lingua franca of the Western world, allowances are made for the varying levels of sensitivity for certain words and expressions in foreign languages, give that “sensitivity in the mother tongue may be greater than in a foreign language“.
But perhaps the most important takeaway point from this case is that it is impossible to determine with any certainty whether a trade mark application will make it past the first hurdle and be accepted by the Examiner. After all, in 2007 the EUIPO registered the mark FUCKING HELL, which would have given the applicants of FACK JU GÖHTE grounds to be optimistic for their application’s prospects.
Evaluating the likelihood of success of an application is an art and not a science. For that reason, it is just as important to seek advice from a professional, as it is to accept that there is an inevitable element of risk which comes with trade mark applications.
Sometimes, getting the right advice can make the difference between a successful application, and being told to fack off.
Written by Joshua Schuermann, Solicitor