In Constantin Film v EUIPO, the CJEU was asked to rule on EUIPO’s refusal of a registration of an EU trade mark of the word sign ‘Fack Ju Göhte’. In this context, the court had to determine whether the word sign falls under the absolute ground of refusal of being contrary to public morality (Art 7(1)(f) Council Regulation (EC) No 207/2009). This absolute ground of refusal also contains a second ground: the sign being contrary to public policy, but this was not examined in the case ([38] of the judgement).
The refusal of registration on the basis of the absolute ground of refusal of the sign being contrary to accepted principles of morality was held to be false as the absolute ground was not made out on the facts. The court first defined the term ‘accepted principles of morality’ as referring to contemporary societal moral norms and values [39], but then seemed to abandon the concept of society as a whole when referring to the actual test for whether the ground is made out. Here, the court instead relied on the perception of the “relevant public” of whether the sign offends accepted principles of morality [41]. The relevant public appears to be made up of the average consumer of the products and services in relation to which the sign is to be registered. In the case of Fack Ju Göhte, it was regarded as accepted that this would be the German-speaking general public of the Union [45].
While the case was undoubtedly correctly decided on the facts, the test applied by the court is troublesome and likely needs further refining. The court’s test appears to narrow the public morality ground of refusal enshrined in Art 7(1)(f) Reg 207/2009 by subjectifying the test. Art 7(1)(f) Reg 207/2009 reads:
“1. The following shall not be registered:
[…]
(f) trade marks which are contrary to public policy or to accepted principles of morality.”
The provision does not narrow the scope of “accepted” only to the relevant public’s perception of what constitutes an accepted moral norm in contemporary society. Rather, the fact that the provision does not make reference to a specific point of view appears to imply that the entirety of society is meant. The court initially appears to adopt this reasoning, defining accepted principles of morality as
“[…] the fundamental moral values and standards to which a society adheres at a given time. Those values and norms, which are likely to change over time and vary in space, should be determined according to the social consensus prevailing in that society at the time of the assessment. In making that determination, due account is to be taken of the social context, including, where appropriate, the cultural, religious or philosophical diversities that characterise it, in order to assess objectively what that society considers to be morally acceptable at that time.” [39]
But the court then abandons its reference to society as a whole when setting out the actual test of whether something is contrary to accepted principles of morality. Instead of adopting an objective test, where the sign is measured against the accepted principles, the court adopts a subjective test, asking whether the relevant public would perceive the sign to be contrary to accepted principles of public morality [41]. This is troublesome because this subjectification of the test may lead to a result where the general society would deem something contrary to accepted principles of morality, but the relevant public would not. If the test of the CJEU is applied, the opinion of the relevant public would prevail.
An example of such a situation is this fictional scenario: An application for an EU trade mark is filed in relation to clothing. The word sign consists of a slogan that is used exclusively in the Neonazi scene of a Member State and the general public would deem the sign contrary to accepted principles of public morality. The applicant solely markets their products at Neonazi rallies, on websites affiliated with such beliefs and in magazines whose target audience is made up of Neonazis. Who is the relevant public? Neonazis. If you ask them whether the sign is contrary to accepted principles of morality or not, their answer likely differs from that of general society. The relevant public would define the content of the accepted principles of morality differently to how general society would define that content.
At this point, it may be objected that the court’s definition of accepted principles of morality does not refer to the relevant public’s accepted principles, but rather to the principles accepted across society as a whole [39]. However, what would be the point of introducing the point of view of the relevant public if they only carry out an objective assessment of measuring the sign against the established accepted principles of morality which they may not even share? In that case, we would have an objective test in which the consideration of the relevant public is obsolete. If the introduction of the relevant public into the test is to have any meaning, the relevant public’s definition of what constitutes accepted principles of morality must play a role. And this may create cases where the relevant public’s definition of accepted principles of morality could prevail over the definition of the general society.
It should be pointed out that the court did limit the definition of the relevant public for the purpose of their perception to some extent by referring to the point of view of a reasonable person from the relevant public:
“[…] the examination is to be based on the perception of a reasonable person with average thresholds of sensitivity and tolerance, taking into account the context in which the mark may be encountered and, where appropriate, the particular circumstances of the part of the Union concerned.” [42]
But since the court has already limited the pool of reasonable persons it can rely on by referring to the “relevant public”, it cannot substitute beliefs which the relevant public does not hold. What if a key characteristic of the relevant public is a lack of tolerance? Does “average thresholds of sensitivity and tolerance” refer to averages in society as a whole or within the relevant public? The court’s attempt to salvage its subjective test through the introduction of the reasonable person is not enough of a safeguard against the test potentially yielding the result of the relevant public’s perception trumping society’s accepted principles of morality.
Cases like the scenario described above could potentially be caught by Art 7(1)(f) Reg 207/2009’s second absolute ground of refusal: the sign being contrary to public policy. But there is no good reason why scenarios such as the one described above should not also be caught by the absolute ground of refusal based on accepted principles of morality. The court should refine its test and remove the subjectivity it introduced into it. Instead of asking about the relevant public’s perception, the test should be an objective two-step test:
1. What makes up the accepted principles of morality?
2. Is the sign contrary to the accepted principles defined in the first step?
There is no need for that assessment to be made by a reasonable person from the relevant public. The sign either is contrary to the principles or it is not. All the court needs to determine is whether society's accepted principles of morality are offended or not. If one wants to introduce a point of view, it should be that of the general society: would the general public, which has defined its principles of morality as determined in the first step, deem them to be violated by the sign?
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