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Fernandez De La Mora Hernandez, Alvaro orcid.org/0000-0003-1598-9117 (2020)
Inconsistencies in European trade mark law: the public policy and morality exclusions.
Intellectual Property Quarterly. pp. 271-298. ISSN 1364-906X

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 Inconsistencies in European Trade Mark Law Alvaro Fernandez-Mora
October 2020

This article was published as:

Alvaro Fernandez-Mora, ‘Inconsistencies in European Trade Mark Law: The Public Policy and
Morality Exclusions’ 4 Intellectual Property Quarterly (IPQ) 271 (2020), available at:
https://uk.westlaw.com/Document/IC51C7610248111EB84E3AFDEA08E8491/View/FullText.ht
ml?transitionType=Default&contextData=%28sc.Default%29.

Please quote from this source.

Inconsistencies in European Trade Mark Law: The Public Policy and Morality
Exclusions

Alvaro Fernandez-Mora*

Abstract

European decision-makers have not adopted a uniform approach to the interpretation

of the public policy and morality exclusions. This has resulted in a worrying degree of
unpredictability, with similar signs being refused registration in some instances while
being granted in others. In the search for consistency, commentators have thus far
focused on one controversial aspect of the exclusions: the role role that the protection
afforded by freedom of expression under Article 10 ECHR ought to play in trade mark
registration. This article argues that this is only one of several sources of inconsistency
that can be identified in the case law. Current approaches are also split as regards the
correct interpretation of these grounds for refusal, including: (a) their conceptual
boundaries; (b) how to correctly define the relevant public; and (c) their applicable legal
test(s). It is only if decision-makers address these additional sources of inconsistency
moving forward that it will be possible to harmonise this area of law. This is a timely
endeavour in light of the recent decision in ‘Fack Ju Göhte’, where the CJEU has ruled on
the morality exclusion for the first time.

1. Introduction

Absolute grounds for refusal of registration of marks that are immoral or that
contravene public policy can be found in trade mark statutes worldwide. In Europe,
Article 7(1)(f) of the EU Trade Mark Regulation (EUTMR) provides as follows:

1. The following shall not be registered or, if registered, shall be liable to be

declared invalid:
[…]
(f) trade marks which are contrary to public policy or to accepted principles of
morality.1

* Assistant Professor in Intellectual Property Law, Department of Legal Studies, Central European
University. DPhil (University of Oxford); LLM (University of Harvard). The author would like to thank
Professor Graeme Dinwoodie for comments on an earlier version of this article.

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 Inconsistencies in European Trade Mark Law Alvaro Fernandez-Mora
October 2020

Equivalent provisions can be found in Article 4(1)(f) of the Trade Marks Directive (TMD)
and Section 3(3)(a) of the UK Trade Marks Act.2 Under these provisions, trade mark
applications consisting of expressions that can cause outrage amongst the relevant
public by reason of their immorality or their contravention of public policy will be denied
access to the register.

An overview of the case law dealing with these exclusions reveals that European
decision-makers have not adopted a uniform approach to their interpretation. This has
resulted in a worrying degree of unpredictability, as illustrated by the numerous
inconsistencies found in the types of signs that have been granted access to European
registers when compared to those that have not.3 Signs such as ‘Fucking Freezing!’,
‘¡Que Buenu Ye! Hijoputa’ (where ‘hijoputa’ translates into ‘son of a bitch’ in Spanish),
‘Paki’, ‘Ficken’ (which means ‘to fuck’ in German), ‘Fuck Cancer’, ‘Screw You’ (for goods
other than sex products), ‘Curve’ and ‘Curve 300’ (where ‘curvă’ stands for ‘whores’ in
Romanian), ‘Mechanical Apartheid’, ‘Bin Ladin’, ‘Jesus’, ‘Tiny Penis’ or ‘Fook’ have been
denied access to European registers.4 Meanwhile, signs like ‘Fooc’, ‘FCUK’, ‘Fack Ju
Göhte’, ‘Fucking Hell’, ‘Dick & Fanny’, ‘Jewish Monkeys’, ‘Kuro’ (where ‘kúró’ translates
into ‘fucker’ in Hungarian) or ‘Aircurve’ (compare with ‘Curve’ and ‘Curve 300’ above,
which were denied registration on grounds that ‘curvă’ means ‘whores’ in Romanian)
have been registered as trade marks in Europe.5

The degree of inconsistency in this area is such that we even find instances where
different trade mark offices have reached contrasting outcomes in relation to the same

1 Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the
European Union Trade Mark.
2 Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to

approximate the laws of the Member States Relating to Trade Marks; UK Trade Marks Act 1994 (UK TMA).
3 The unpredictability governing this area of law was noted by the EUIPO Board of Appeal in R-793/2014-

2, Application of Ung Cancer ('Fuck Cancer’) 23 February 2015 (EUIPO Board of Appeal) [22].
4 R 168/2011-1, Application of Türpitz ('Fucking Freezing!’) 30 November 2010 (EUIPO Board of Appeal);

Case T-417/10, Federico Cortés del Valle López v OHIM ('¡Que Buenu Ye! Hijoputa’) (2012)
ECLI:EU:T:2012:120; Case T-526/09, PAKI Logistics GmbH ('Paki’) v OHIM (2011) ECR II-00346; Case T-
54/13, Efag Trade Mark Company ('Ficken’) v OHIM (2013) EU:T:2013:593; R-793/2014-2, Application of
Ung Cancer ('Fuck Cancer’) (n 3); R 495/2005-G, Application of Jebaraj Kenneth ('Screw You’) (2006) [2007]
ETMR 7 (EUIPO Grand Board of Appeal); Case T-266/13, Brainlab AG v OHIM ('Curve’) (2014) ECLI: EU: T:
2014: 836; R 288/2012-2, Application of HNI Technologies Inc ('Curve 300’) 1 June 2012 (EUIPO Board of
Appeal); R 2804/2014-5, Application of Square Enix Ltd ('Mechanical Apartheid’) 6 February 2015 (EUIPO
Board of Appeal); R 176/2004-2, Application of Falcon Sporting Goods AG ('Bin Ladin’) 29 September 2004
(EUIPO Board of Appeal); Basic Trademark SA’s Trade Mark Application ('Jesus’) [2005] 1 WLUK 196
(Appointed Person); Ghazilian’s Trade Mark Application ('Tiny Penis’) [2001] 11 WLUK 742 (Lord
Chancellor’s Appointed Person); Scranage’s Trade Mark Application ('Fook’) [2008] 3 WLUK 577
(Appointed Person).
5 EUIPO Trade Mark Database: EUTM No 018088477 ('Fooc’) registered on 22 November 2019, owned by

He Qiongyang; French Connection Ltd’s Trade Mark Application ('FCUK’) [2006] 5 WLUK 432 (Appointed
Person); Case C-240/18, Constantin Film Produktion ('Fack Ju Göhte’) v EUIPO (2019) EU:C:2019:553; R
385/2008-4, Application of Stefan Fellenberg and Dr Florian Krause ('Fucking Hell’) 21 January 2010 (EUIPO
Board of Appeal); R 111/2002-4, Application of Dick Lexic Ltd ('Dick & Fanny’) [2005] ETMR 99 (EUIPO
Board of Appeal); R 519/2015-4, Application of Josef Reich ('Jewish Monkeys’) 2 September 2015 (EUIPO
Board of Appeal); R 482/2012-1, Application of Michael Kühn ('Kuro’) 22 November 2012 (EUIPO Board of
Appeal); R 203/2014-2, Application of ResMed Ltd ('Aircurve’) 4 June 2014 (EUIPO Board of Appeal).

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 Inconsistencies in European Trade Mark Law Alvaro Fernandez-Mora
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sign, denying registration in one jurisdiction while granting it in another. For instance,
the sign ‘Fook’ was denied registration as a national mark in the UK by virtue of the
decision of the Appointed Person (AP) in Scranage’s Trade Mark Application.6 However,
this sign was subsequently granted registration to the same applicant as an EU mark by
the European Union Intellectual Property Office (EUIPO), thus covering the territory of
the (then) 28 Member States, including that of the UK.7 Admittedly, not all cases where
different decision-makers reach contrasting outcomes will be reflective of an
inconsistent application of the public policy and morality exclusions. In a pluri-national,
multi-cultural setting such as the EU, the fact that the same sign has been registered in
one Member State but refused in another does not necessarily serve as evidence of the
fragmented state of the law, but may, instead, be the result of different moral values
and/or sensitivity thresholds. This has been acknowledged by the EUIPO in the following
terms:

Tolerance thresholds [for purposes of Article 7(1)(f) EUTMR] are not the same in
all Member States; for instance, religious feelings can vary in intensity from one
country to another. In this sense the mark ‘Jesus’ was found immoral in the UK
[…] but it was accepted without any objection by the Benelux Bureau for
Intellectual Property.8

Because what is deemed to be immoral and/or contrary to public policy can vary from
one country to the other, this article will not address the divergences between decision-
makers operating out of different EU Member States. Instead, it will focus on the
inconsistencies: (a) between the EU and its Member States, notably the UK; and (b)
within the EU, i.e. between the EUIPO, the General Court (GC) and the Court of Justice
of the European Union (CJEU).

It is no easy endeavour to systematise the case law in this area. As acknowledged by

Hobbs QC in Basic Trademark SA’s Trade Mark Application, an overview of the marks
that have been denied registration on morality and/or public policy grounds reveals the
‘difficulty (probably the impossibility) of formulating an all-purpose test for determining
when the relevant prohibition is applicable’. 9 Much of the ongoing controversy stems
from decision-makers’ inability to reach a consensus as to the role that the protection
afforded by freedom of expression under Article 10 of the European Convention on
Human Rights (ECHR) ought to play in trade mark law generally, and in the registration
context specifically.10 An inquiry that has come to the forefront of the debate fuelled by
applicants’ growing reliance on speech as a ground to challenge the validity of refusals
to register their applied-for signs when they contravene public policy or morality.
Applicants argue that their inability to communicate their preferred messages in the

6 Scranage (n 4). In the UK, appeals from decisions by the Registrar of Trade Marks can be brought before

the High Court or the Lord Chancellor’s Appointed Person. See TMA, ss 76 and 77.
7 EUIPO Trade Mark Database: EUTM No 883006 (‘Fook’) registered on 10 January 2006, owned by Kevin

Scranage.
8 R 2244/2016-2, Application of Brexit Drinks Ltd ('Brexit’) 28 June 2017 (EUIPO Board of Appeal) [17].
9 Basic (n 4) [13].
10 Convention for the Protection of Human Rights and Fundamental Freedoms (European Convention on

Human Rights, as amended).

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 Inconsistencies in European Trade Mark Law Alvaro Fernandez-Mora
October 2020

course of trade –i.e. through the exclusive use of their preferred signs resulting from
registration– runs counter to their Article 10 ECHR rights.

This phenomenon is not unique to the EU, nor to the registration context. The debate
as to whether speech protection is implicated in trade mark registration has been
particularly salient in the US. As a result of the recent Supreme Court decisions in Matal
v Tam (‘The Slants’) and Iancu et al v Brunetti (‘FUCT’), the disparaging, scandalous and
immoral clauses of the Lanham Act have now been struck down on First Amendment
grounds.11 A very different outcome to the ones we find in Europe, where freedom of
expression plays a more modest role, if at all. Furthermore, free speech has been
invoked in areas of trade mark law other than registration. In infringement litigation, for
instance, defendants are increasingly seeking to insulate their unauthorised uses of
marks for expressive purposes on their Article 10 ECHR rights –with varying degrees of
success throughout the EU. 12

This article does not explore the interaction between marks and speech in contexts
other than registration. However, awareness of the full range of instances where both
sets of rights interact serves to highlight the potential ramifications that a court’s finding
in registration litigation could have in other areas of trade mark law. This might, in turn,
explain decision-makers’ –and even scholars’– hesitation to fully engage with the
complex questions raised by the interaction between marks and speech to date. But this
is likely not the only reason. This interaction remains, for the most part, uncharted
territory. The ways in which both sets of rights interact have not been sufficiently
explored to date, let alone the legal implications that ought to ensue from their
interaction. There is no denying that leading this journey can be daunting for decision-
makers. Insofar as marks are, at their core, units of language, the repercussions that the
infusion of speech protection into trade mark law can have in the field are not only
difficult to predict, but potentially far-reaching too. Nevertheless, the time is ripe for
decision-makers to shed light on this controversial topic. Otherwise, the lack of guidance
on the relationship between marks and speech will lead to even higher degrees of
unpredictability in the coming years, further threatening the consistency of the field.

The only way to prevent this is –perhaps counterintuitively– by moving away from the
widespread notion that inconsistencies in this area of law are fundamentally the result
of decision-makers’ inability to address the interaction between marks and speech
adequately. To this day, efforts by commentators to bring clarity to the interpretation

11 Matal 137 S Ct 1744 (2017); Iancu 139 S Ct 2294 (2019).

12 Courts from different EU Member States have reached contrasting outcomes in infringement litigation
involving modified uses of reputed marks for expressive purposes, normally for parody or commentary.
This is often the result of different courts adopting divergent thresholds for determination of what
amounts to expressive use of a mark that is deserving of protection under Article 10 ECHR. The stricter
threshold imposed in the UK has often led courts to side with plaintiffs after a finding that defendants’
use was not expressive. Ate My Heart Inc (AKA Lady Gaga) v Mind Candy Ltd [2011] EWHC 2741 (Ch); Miss
World Ltd v Channel 4 Television Corp [2007] EWHC 982 (Pat). In contrast, the more generous threshold
applied by the courts of Germany and The Netherlands has shielded defendants from infringement after
a finding that their use was indeed expressive. Respectively: Nadia Plesner v Louis Vuitton (2011) case LJN
BQ3525 (The Hague District Court); Violet Postcard (Lila-Postkarte) (2007) 38 IIC 119 (BGH, 3 Feb 2005).

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 Inconsistencies in European Trade Mark Law Alvaro Fernandez-Mora
October 2020

of the public policy and morality exclusions have focused on this interaction.13 This has
been to the detriment of other aspects of Article 7(1)(f) EUTMR on which European
decision-makers have been unable to reach a consensus, which have remained largely
unaddressed. The aim of this article is to bring these additional aspects to the forefront
of the debate as well, proposing a holistic approach to redressing the inconsistencies
identified in the field.

Current approaches to Article 7(1)(f) EUTMR are also inconsistent as regards the correct
interpretation of each ground for refusal, including: (a) their conceptual boundaries, i.e.
whether they overlap or, on the contrary, they impose different requirements on trade
mark applicants;14 (b) how to correctly define the relevant public for purposes of these
exclusions; and (c) the test(s) to be applied to determining whether an applied-for sign
is immoral and/or contrary to public policy. The prevailing legal uncertainty in this area
does not, therefore, result from one single source of inconsistency, but rather has
several axes. Being aware of this diversity is crucial to properly engage with, and put an
end to, decision-makers’ contrasting approaches to the interpretation of Article 7(1)(f)
EUTMR. To this end, this article will study in detail all three axes of inconsistency
identified, in addition to the interaction between marks and speech.

This article will seek to move us forward in our understanding of the public policy and
morality exclusions in two other ways. First, and precisely as a result of the previous
shortcoming, existing materials on this topic have failed to address how the different
axes of inconsistency relate to each other. Insofar as the different areas where decision-
makers have not reached a consensus do not operate in a vacuum, understanding how
they influence each other is key to proposing interpretations that can put an end to the
prevailing uncertainty. This article will aim to show how the different axes of
inconsistency identified are, to a large extent, intertwined, i.e. each axis is the result,
and contributes to, the others. For instance, decision-makers’ inability to reach a
common position on whether speech protection is implicated in the registration context
greatly determines how they interpret the morality and public policy exclusions, notably
their applicable test(s).

And, second, as regards the interaction between marks and speech, attempts at
exploring this interaction in the registration context are characterised by a lack of

13 Tobias Endrich-Laimböck and Svenja Schenk, ‘Then Tell Me What You Think About Morality: A Freedom
of Expression Perspective on the CJEU’s Decision in FACK JU GÖHTE (C-240/18 P)’ [2020] IIC; Christophe
Geiger and Leonardo M Pontes, ‘Trade Mark Registration, Public Policy, Morality and Fundamental Rights’
Centre for International Intellectual Property Studies (CEIPI) Research Paper No 2017-01; Susan Snedden,
‘Immoral Trade Marks in the UK and at OHIM: How Would the Redskins Dispute Be Decided There?’ (2016)
11 JIPLP 270; Enrico Bonadio, ‘Brands, Morality and Public Policy: Some Reflections on the Ban on
Registration of Controversial Trademark’ (2015) 19 Marquette IP L R 43; Ilanah Simon Fhima, ‘Trade Marks
and Free Speech’ [2013] IIC 293; Jonathan Griffiths, ‘Is There a Right to an Immoral Mark?’ in Paul
Torremans (ed), Intellectual Property and Human Rights (Kluwer 2008); Marco Ricolfi, ‘Trademarks and
Human Rights’ in Paul Torremans (ed), Intellectual Property and Human Rights (Kluwer 2008).
14 Admittedly, Snedden and Humphreys have noted that European decision-makers have not always made

a clear-cut distinction between both grounds of refusal. Snedden (n 13) 273; Gordon Humphreys, ‘Deceit
and Immorality in Trade Mark Matters: Does It Pay to Be Bad?’ (2007) 2 JIPLP 89, 91. However, their
analyses did not go any further, whether by exploring cases where such a distinction has been made or
proposing avenues for reform.

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 Inconsistencies in European Trade Mark Law Alvaro Fernandez-Mora
October 2020

nuance. This is partly due to decision-makers’ failure to conduct a detailed analysis of

the ways in which refusals of registration can impact applicants’ speech interests. Trade
mark offices and appeal courts cannot be expected to navigate the interaction between
marks and speech adequately if they lack a robust understanding of the underlying
policy considerations. Furthermore, the vast majority of decision-makers hearing
registration cases seem to lack the required familiarity with the legal test developed by
the European Court of Human Rights (ECtHR) under Article 10 ECHR to undertake a solid
assessment of the compatibility of refusals of registration with speech requirements.
Although their analyses of applicants’ speech concerns are often conceptualised in
terms of balancing opposing interests, their inquiries are not framed within the
proportionality exercise mandated under the Convention in instances where freedom
of expression is interfered with by public authorities.15 This article will assist decision-
makers in both of these areas by: (a) exploring how refusals of registration can interfere
with applicants’ speech rights; (b) illustrating how the proportionality test mandated
under Article 10 ECHR ought to be applied to refusals of registration; and (c) explaining
what is to be gained from application of this test.

Against this backdrop, it is surprising that the CJEU had remained silent on this topic for
so long –contributing to the prevailing sense of uncertainty. No reference for a
preliminary ruling has been launched to date before the CJEU by the courts of Member
States asking for guidance on the interpretation of Article 7(1)(f) EUTMR. Fortunately,
guidance can now be found in its recent decision in Constantin Film Produktion v EUIPO,
where the Court was asked to rule on the interpretation of this provision for the first
time.16 Appellant had requested the CJEU to overturn the decisions of the GC and the
EUIPO Board of Appeal (BoA) denying registration to the sign ‘Fack Ju Göhte’ for a wide
range of goods and services on, amongst others, free speech grounds. In siding with
appellant, the Court has moved away from an abstract assessment of the morality
exclusion, opting instead for an evidence-based inquiry as to whether the applied-for
sign is liable to cause outrage amongst the relevant public. Given that this judgment was
handed down only quite recently, this article will engage with the Court’s findings in
quite some detail in an attempt to lead the way for future commentators and decision-
makers working in this field.

This decision ultimately constitutes a missed opportunity on the part of the Court to
harmonize an area of law that has proved to be particularly problematic. Although
regrettable, there is, however, reason to remain optimistic. First, the Court should be
praised for putting an end to the ongoing debate as to whether freedom of expression
is implicated in trade mark registration by holding that speech interests must be taken
into account upon interpretation of Article 7(1)(f) EUTMR. How they must be taken into
account, and whether they extend to other areas of trade mark law (notably,
infringement) remains, however, a contentious issue that the Court must explore in
future cases. And, second, the Court proposes a fact-sensitive, contextual test to
interpreting what ought to be deemed a morally objectionable sign for purposes of
European trade mark law. In so doing, the Court is not only harmonising the
interpretation of the morality exclusion but is arguably also broadening the range of

15 R 2804/2014-5, Square Enix (n 4); Basic (n 4); R 495/2005-G, Jebaraj Kenneth (n 4).
16 Case C-240/18, Constantin Film Produktion (n 5).

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marks that can be registered under the exclusion. These are no minor developments in
this area. Though lacking in ambition, this decision is thus perhaps best characterised as
a much-needed first step in the right direction.

To explore these ideas in further detail, Sections 2 and 3 will provide an overview of the
state of disarray in which the field found itself prior to the decision of the CJEU in
Constantin Film Produktion. Section 2 will look at the three shortcomings identified
earlier stemming from the (mis)interpretation of the public policy and morality
exclusions, i.e. (a) their conceptual boundaries; (b) how to correctly define the relevant
public; and (c) their applicable legal test(s). This will be followed, in Section 3, by a
detailed analysis of the role that speech protection has thus far played in the registration
context. The aim in doing so is to set the ground for critical engagement with the
decision of the CJEU in Constantin Film Produktion, in Section 4, in an attempt to
elucidate the extent to which the shortcomings previously identified have now been
redressed by the Court. Concluding remarks will follow in Section 5.

2. The Inconsistent Interpretation of the Public Policy and Morality Exclusions in

Europe (I): Overlooked Sources of Inconsistency

An overview of the case law in this area reveals a lack of consensus as to the correct
interpretation of each of the grounds for refusal contained in Article 7(1)(f) EUTMR,
including: (a) their conceptual boundaries; (b) how to correctly define the relevant
public; and (c) their applicable legal test(s).

2.1. The Conceptual Boundaries of the Public Policy and Morality Exclusions

European decision-makers have devoted little attention to defining the content of the
public policy and morality exclusions, including whether they overlap and, if so, to what
extent. The lack of clear conceptual boundaries between both exclusions has greatly
contributed to the sense of uncertainty that governs this area of law.

In Application of Square Enix Ltd, for instance, the EUIPO BoA’s finding that the sign
‘Mechanical Apartheid’ was contrary to Article 7(1)(f) EUTMR failed to distinguish
between each ground of refusal, going as far as to use them indistinctly throughout its
decision. The Board began its analysis arguing that ‘the [trade mark] application is
contrary to public policy and to accepted principles of morality’.17 Later on, the Board
held that ‘Article 7(1)(f) CTMR clearly imposes a duty on the Office to exercise a degree
of moral judgment in assessing the suitability of signs to be granted trade mark
protection’.18 Finally, the Board went on to conclude that the applied-for sign ‘is
contrary to the European Union’s public policy’.19

In Couture Tech v OHIM, the GC upheld the EUIPO’s refusal to register a figurative sign
depicting the coat of arms of the former USSR on grounds that it would be ‘contrary to
public policy or to accepted principles of morality’ in those Member States which had

17 R 2804/2014-5, Square Enix (n 4) [8] (emphasis added).

18 ibid [10] (emphasis added).
19 ibid [30] (emphasis added).

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 Inconsistencies in European Trade Mark Law Alvaro Fernandez-Mora
October 2020

been subject to the Soviet regime.20 The Court relied on the provisions of the Hungarian
Criminal Code banning the use of symbols reminiscent of the Soviet Union to conclude
that the public would find them to contravene public policy or morality in, at least,
Hungary. In reaching its decision, the GC made no distinction between each ground of
refusal, opening the door to speculation as to whether their content overlaps in all cases
or only in the case at hand. 21 Given the sweeping implications of the former
interpretation (i.e. decision-makers will never be required, under Article 7(1)(f) EUTMR,
to analyse each ground separately), subsequent decisions have read Couture Tech in the
sense that both grounds overlap only sometimes.22

To further complicate things, in Constantin Film Produktion (i.e. ‘Fack Ju Göhte’), the GC
held that ‘the concepts of “public policy” and “accepted principles of morality” are
different but they often overlap. Thus [decision-makers are] not obliged to distinguish
between the two.’23 In his opinion on appeal, AG Bobek strongly disagreed with this
view, arguing that ‘the conceptual difference between [public policy and morality] has
repercussions for what exactly is to be assessed and how’.24 Although the AG concedes
that both concepts can sometimes overlap, neither their source nor subject matter
coincides.25 He then goes on, in a much-needed attempt to systematize the
interpretation of the public policy and morality exclusions under EU law, to define each
of these grounds. In his view, public policy is top-down in nature, in the sense that it
stems from a public authority’s ‘normative vision of values and goals’ as set out in its
laws and policy documents. 26 In contrast, accepted principles of morality make
reference to the set of values, principles and beliefs that govern society at a given point
in time –they are, thus, bottom-up in nature.27 Unfortunately, as we will go on to study
in Section 4.1., the decision of the CJEU fails to engage in discussion of the conceptual
boundaries of both exclusions –opening the door to speculation as to whether the AG’s
analysis will be followed by future decision-makers.

2.2. The Definition of Relevant Public for Purposes of the Public Policy and Morality
Exclusions

Under Article 7(1)(f) EUTMR, decision-makers must define the relevant public from
whose perspective they will evaluate the compatibility of the applied-for sign with public
policy and/or morality. Three elements must be taken into consideration here: (a) the
type of consumer that, in the light of the goods and/or services claimed by the applicant,
is likely to confront the mark if it were to be granted registration; (b) the objective
standard from which the notions of public policy and morality ought to be assessed; and

20 Case T-232/10, Couture Tech Ltd v OHIM (2011) ECR II-06469 [72] (emphasis added).
21 This has also been noted by Snedden (n 13) 273.
22 Case E-5/16, Municipality of Oslo ('Vigeland’) [2017] (EFTA) [85].
23 Case C-240/18, Constantin Film Produktion (n 5) Opinion of AG Bobek [59] discussing the appealed

decision from the GC: Case T-69/17, Constantin Film Produktion v EUIPO (2018) ECLI:EU:T:2018:27 [23].
24 Case C-240/18, Constantin Film Produktion (n 5) Opinion of AG Bobek [60]. This is also the opinion of

Arnold QC in French Connection (n 5) [59].

25 This was also the finding of the EFTA Court in Case E-5/16, Vigeland (n 22) [84]-[85].
26 Case C-240/18, Constantin Film Produktion (n 5) Opinion of AG Bobek [75]-[83].
27 As acknowledged by AG Bobek in ibid [78], the EFTA Court has established a similar distinction between

both grounds of refusal in Case E-5/16, Vigeland (n 22) [86].

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October 2020

(c) the section of the population that is liable to be offended by the applied-for sign in
instances of diverse ‘linguistic, historic, social and cultural’ groups within a trade mark
system.28 Let us look at each of these elements in more detail.

First, determining the type of consumer that, in the light of the goods and/or services
claimed by the applicant, is likely to confront the mark if it were to be granted
registration is often a straightforward endeavour. Decision-makers are well acquainted
with this exercise, which is common practice upon defining the average consumer in
other areas of trade mark law (e.g. infringement). This requires ascertaining whether
the sign will be confronted by the general public or, rather, by a specialised part of the
public –in which case the subset of EU consumers taken into consideration will be
smaller.

Second, defining the objective standard from which the notions of public policy and
morality ought to be assessed is rarely a contentious issue either. Different viewpoints
have, however, been adopted by decision-makers operating out of different
jurisdictions. The UK AP has often ‘plac[ed it]self in the shoes of the “right-thinking”
member of the public’.29 As defined by Thorley QC in Ghazilian’s Trade Mark Application,
‘[a] right-thinking member may himself or herself not be outraged but will be able,
objectively, to assess whether or not the mark in question is calculated to cause […]
“outrage” or “censure” […] amongst a relevant section of the public.’ 30 Admittedly,
neither the notion of ‘right-thinking member of the public’ nor its definition bring much
to the table in terms of providing a clear viewpoint from which to undertake the
assessment of public policy and/or morality. This might explain why Arnold QC (as he
then was) made no attempt, later on, to define the relevant public in French Connection
Ltd’s Trade Mark Application (including the standard from which to assess the morality
of the applied-for sign ‘FCUK’), opting instead to focus on the notion of ‘objectivity’.31 In
the EU, decision-makers have agreed on the objective standard from which the notions
of public policy and morality ought to be assessed, which is defined as ‘the standards of
a reasonable person with normal levels of sensitivity and tolerance’.32

And, third, delimitating the section of the population that is liable to be offended by the
applied-for sign in instances of diverse linguistic, historic, social and cultural groups
within a trade mark system had, until recently, not proved very problematic either.
Article 7(2) EUTMR provides that absolute grounds for refusal of EU marks (including
public policy and morality) ‘shall apply notwithstanding that the grounds of non-
registrability obtain in only part of the Union’. Because EU marks grant owners an
exclusive right throughout the territory of the EU, applications for registration filed
before the EUIPO impose on decision-makers the additional requirement of ensuring
that the applied-for sign is not contrary to public policy or morality in any of the (now)
27 Member States. As a result, a sign that raises no public policy/morality concerns in

28 Case T-1/17, La Mafia Franchises SL (‘La Mafia se Sienta a la Mesa’) v EUIPO (2018) ECLI:EU:T:2018:146

[28].
29 Ghazilian (n 4) [50]. This standard was also followed by Hobbs QC in Basic (n 4) [17]-[19].
30 Ghazilian (n 4) [32].
31 French Connection (n 5) [60(4)].
32 Case T-417/10, Federico Cortés (n 4) [17]; Case T-526/09, PAKI Logistics (n 4) [12]; R 495/2005-G, Jebaraj

Kenneth (n 4).

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the vast majority of Member States may, however, be denied registration on the basis
that it is liable to cause outrage amongst a subset of the EU public.

Properly delimitating the relevant public in EU-wide scenarios thus constitutes a crucial
step of the inquiry, that can greatly determine the chances of success of a trade mark
application. Misdefining the relevant public can lead to one of the following two
scenarios. First, a sign’s ability to cause outrage amongst a subset of the EU public may
be disregarded by the trade mark-granting authority (e.g. where the examiner is
unaware that the sign constitutes an offensive term in one of the 24 official languages
of the EU), leading to the applied-for sign being incorrectly registered. And, second, the
sign’s departure from acceptable social standards may be assessed incorrectly, whether
to the applicant’s benefit or to its detriment. The former can occur, for instance, where
the sign, which can be offensive under two different languages, is only assessed in the
light of one of them. Because the relevant public will be defined without taking into
account both community of speakers within the EU, the applicant’s chances of success
will be higher.

Article 7(2) EUTMR has been routinely applied by the GC and the EUIPO with a view to
ensuring respect for the diversity of cultures and languages that can be found in the EU.
Admittedly, cases where the relevant public has been defined by reference to historical,
social or cultural traits are rare. In Couture Tech, for instance, the refusal to grant
registration to a figurative sign depicting the coat of arms of the former USSR was
premised on the special sensitivity that the ‘public living in the part of the European
Union which had been subject to the Soviet regime’ has to symbols connected to the
Soviet Union.33 In most cases involving application of Article 7(2) EUTMR, signs have
been refused registration on grounds that they constitute swear words in one of the
official languages of the EU. In PAKI Logistics v OHIM, for example, the GC defined the
relevant public as the English-speaking population within the EU ‘since the term "paki"
has a meaning in the English language’.34 In Federico Cortés del Valle López v OHIM, the
GC found that ‘the moral standards that ought to be taken into consideration were those
generally recognized in Spain since the mark [‘¡Que Buenu Ye! Hijoputa’] is made up of
Spanish expressions’.35 In Brainlab AG v OHIM, a case involving the refusal of registration
of the sign ‘Curve’ on morality grounds, the GC defined the relevant public as the
Romanian-speaking population of the EU ‘[s]ince the trade mark applied for is a word in
the Romanian language, [more precisely,] the plural of the […] word "curvă", which […]
means "prostitute" or "whore".’36 In Efag Trade Mark Company v OHIM, the GC denied
registration to the sign ‘Ficken’ (meaning ‘to fuck’ in German) after finding that ‘the
relevant public is made up of […] German-speaking consumers in the Union, since […]
the sign applied for is a German word.’37

Against this backdrop, it is surprising that AG Bobek did not raise any objections to the
definition of relevant public put forth by the GC in Constantin Film Produktion. Following

33 Case T-232/10, Couture Tech Ltd (n 20) [6].

34 Case T-526/09, PAKI Logistics (n 4) [19] (author’s translation from French).
35 Case T-417/10, Federico Cortés (n 4) [13] (author’s translation from Spanish).
36 Case T-266/13, Brainlab (n 4) [15] (author’s translation from German).
37 Case T-54/13, Efag (n 4) [13] (author’s translation from German).

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the findings of the EUIPO BoA, the GC had defined the relevant public as the German-
speaking section of the EU:

Since […] the sign applied for [‘Fack Ju Göhte’] constitutes a phonetic
transcription in German of the English expression ‘Fuck you’, which is well known
to the German-speaking public and […] Johann Wolfgang von Goethe is a German
poet and writer that is highly regarded in Germany and Austria […].38

The GC acknowledged that the element ‘Fack Ju’ in the applied-for sign makes reference
to the English expression ‘Fuck You’. In this regard, the BoA had noted in the previous
instance that ‘the pronunciation of the component ‘Fack Ju’ is identical to the expression
‘Fuck You’ [and, t]herefore, its meaning is identical’.39 And yet both the BoA and the GC
failed to include English-speaking consumers in their definition of the relevant public.
This seems at odds with the case law of the GC discussed above, where the language of
the applied-for words or expressions is pivotal to determining the linguistic section of
the EU public that ought to be taken into account. This is all the more worrying in light
of the numerous instances where the EUIPO has concluded that applied-for signs that
contain the word element ‘fuck’ have as their relevant public English-speaking
consumers (for example, ‘Fuck Cancer’, ‘Fucking Freezing!’ or ‘Fucking Hell’),40 even in
instances where the sign was only phonetically equivalent (such as the element ‘fuking’
in the applied-for sign ‘ibizafuKingisland’).41

It would seem, therefore, that the definition of the relevant public in Constantin Film
Produktion should have included, at the very least, the English-speaking section of the
EU. After all, once registered, English-speaking consumers are also bound to come
across the mark ‘Fack Ju Göhte’, which they may find deeply vulgar or offensive.

The GC’s failure to properly define the relevant public in this case had two fundamental
repercussions, both of which favoured the applicant’s chances of success. First, it
reduced the subset of the EU public that ought to be taken into consideration by the
Court from both the English and German-speaking public to the latter only. And, second,
it led the Court to judge the ability of the expression ‘Fuck You’ to cause outrage
amongst a section of the EU population whose mother tongue is not English. As the AG
himself acknowledges, ‘what may appear as intrinsically vulgar or offensive to a native
English speaker may not appear as such to a German (non-native) one, especially when
faced with an uncommon phonetic transcription of an insult originating in a foreign

38 Case T-69/17, Constantin Film Produktion (n 23) [17] (author’s translation from German). Judging from
this excerpt, it could be argued that the definition of relevant public in this case was partially premised on
cultural considerations, i.e. Goethe’s revered status in German and Austrian culture. However, it is
unlikely that this cultural element carried much weight in the definition of relevant public when the BoA
had not, in the previous instance, taken it into consideration upon formulating its definition. R 2205/2015-
5, Application of Constantin Film Produktion GmbH (‘Fack Ju Göhte’) 1 December 2016 (EUIPO Board of
Appeal) [16]-[20].
39 R 2205/2015-5, Constantin Film Produktion (n 38) [23].
40 R-793/2014-2, Ung Cancer (‘Fuck Cancer’) (n 3); R 168/2011-1, Türpitz (‘Fucking Freezing!’) (n 4); R

385/2008-4, Stefan Fellenberg (‘Fucking Hell’) (n 5).

41 Application of Eurokaizen Ltd No 008987943 ('ibizafuKingisland’) 25 August 2010 (EUIPO Examination

Division).

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language.’42 This is what linguists have termed the reduced ‘emotional resonance’ of
foreign words, i.e. the notion that people ‘feel less emotionally reactive when using a
foreign language as compared to a native language’.43

In spite of this ‘rather important implication’, AG Bobek’s opinion is very deferential to

the GC’s finding in this regard.44 According to the AG, ‘the geographical/linguistic
limitation of the relevant public to the German-speaking public of the European Union
is, in view of […] Article 7(2), certainly possible.’45 Unfortunately, the AG does not go on
to explain why this finding is indeed possible under Article 7(2) nor, more importantly,
whether it results from a correct interpretation of this provision. The AG’s failure to
discuss this finding further is likely the result of the procedural constraints imposed upon
the CJEU, who had not been called upon to rule on this issue –neither the EUIPO (who
authored the definition of the relevant public in this case) nor the applicant (who
benefitted from the proposed definition) had appealed this finding.46 As we will go on
to study in Section 4.2., this likely explains why the CJEU’s decision is also very
deferential to the GC’s definition of relevant public.

2.3. The Applicable Test(s) to the Public Policy and Morality Exclusions

European decision-makers are also split on the applicable legal test(s) to the public
policy and morality exclusions. In a very reduced number of cases, trade mark offices
and appeal courts have favoured an empirical approach to determination of an applied-
for sign’s ability to cause outrage amongst the relevant public.47 It is only where there is
evidence to this effect that an applied-for sign can be denied registration under Article
7(1)(f) EUTMR. Because empirical approaches to the interpretation of these exclusions
often stem from the protection afforded to applicants’ speech interests under Article 10
ECHR, these cases will be best addressed upon studying the interaction between marks
and speech in the registration context in Section 3 below.

In the vast majority of cases to date, therefore, decision-makers have favoured an

abstract assessment of an applied-for sign’s ability to cause outrage amongst the
relevant public.48 In such instances, ‘[t]he decisive factor is the objective understanding
of the sign applied for from the point of view of the recipient.’49 This analysis is detached

42 Case C-240/18, Constantin Film Produktion (n 5) Opinion of AG Bobek [87].

43 Lela Ivaz, Albert Costa and Jon A Duñabeitia, ‘The Emotional Impact of Being Myself: Emotions and
Foreign-Language Processing’ (2015) 42 Journal of Experimental Psychology Learning Memory and
Cognition 3.
44 Case C-240/18, Constantin Film Produktion (n 5) Opinion of AG Bobek [87].
45 ibid [87] (emphasis added).
46 This is acknowledged by the CJEU in Case C-240/18, Constantin Film Produktion (n 5) [45].
47 ibid Opinion of AG Bobek; R 2244/2016-2, Brexit Drinks (n 8); Case T-232/10, Couture Tech (n 20); Case

T-526/09, PAKI Logistics (n 4); French Connection (n 5).

48 R 519/2015-4, Josef Reich (n 5); R 2804/2014-5, Square Enix (n 4); R 2889/2014-4, Application of

Verlagsgruppe D K GmbH & Iny Klocke ('Die Wanderhure’) 28 May 2015 (EUIPO Board of Appeal); R-
793/2014-2, Ung Cancer (n 3); Case T-417/10, Federico Cortés (n 4); R 168/2011-1, Türpitz (n 4); R
495/2005-G, Jebaraj Kenneth (n 4); Basic (n 4); Scranage (n 4); R 176/2004-2, Falcon (n 4); Ghazilian (n 4).
49 R 519/2015-4, Josef Reich (n 5) [16]; R 2889/2014-4, Verlagsgruppe (n 48) [12]. In similar terms, the

EUIPO BoA held that ‘the assessment [under Article 7(1)(f) EUTMR] must consider whether the sign
objectively breaches moral and social sentiments’ in R 1727/2014-2, Maktab Tarighat Oveyssi

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from empirical notions of morality/public policy. In Application of Falcon Sporting Goods

AG, for instance, the EUIPO BoA held that applicant’s argument:

[R]elating to the lack of proof of outrage or repulsion on the part of the public
[…] is dismissed since the registrability of a sign […] must be assessed only on the
basis of the relevant […] legislation as interpreted by the […] Courts without
having to justify this action by the production of evidence.50

Instead, their analysis is premised on the notion that ‘Article 7(1)(f) clearly imposes a
duty on the [trade mark-granting authority] to exercise a degree of moral judgment in
assessing the suitability of signs to be granted trade mark protection’. 51

In their attempt to develop a test that allows for determination of when an applied-for
sign will be deemed contrary to public policy and/or morality in objective terms,
decision-makers have adopted very diverse standards. Two decisions have, however,
sought to harmonize the applicable tests by identifying common features in the case
law, more precisely: (a) the judgment from the UK AP in French Connection; and (b) the
decision of the EUIPO’s Grand BoA in Application of Jebaraj Kenneth.52 Despite
originating from different jurisdictions, both decisions show awareness of, and
willingness to learn from, the precedents stemming from the other –this is likely in an
attempt for consistency.

In French Connection, Arnold QC found the registered trade mark ‘FCUK’ compatible
with accepted principles of morality and, thus, ordered that it remain on the register.
Admittedly, this decision ultimately hinged on the lack of evidence to show that the sign
had caused outrage amongst the public, despite extensive use by its owner.53 However,
the AP extracted a series of principles from the prior case law (where the UK AP and the
EUIPO BoA had engaged in abstract assessment of morality) that ought to guide the
objective interpretation of the morality exclusion.54 According to Arnold QC:

For [the exclusion] to apply, there must be a generally accepted moral principle
which use of the mark would plainly contravene […].
Mere offence to a section of the public, in the sense that that section of the
public would consider the mark distasteful, is not enough for [the exclusion] to
apply […].
[The exclusion] does apply if the use of the mark would justifiably cause outrage,
or would be the subject of justifiable censure, amongst an identifiable section of
the public as being likely significantly to undermine current religious, family or
social values […].
[…]

Shahmaghsoudi eV v Roberto Cavalli SpA (oval shape figurative marks) 6 July 2015 (EUIPO Board of
Appeal) [63].
50 R 176/2004-2, Falcon (n 4) [23].
51 R 2804/2014-5, Square Enix (n 4) [10]; R 168/2011-1, Türpitz (n 4) [12]; R 495/2005-G, Jebaraj Kenneth

(n 4) [18].
52 R 495/2005-G, Jebaraj Kenneth (n 4); French Connection (n 5).
53 French Connection (n 5) [89]-[90].
54 Ghazilian (n 4); Basic (n 4); Scranage (n 4); R 111/2002-4, Dick Lexic (n 5).

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A mark which does not proclaim an opinion, or contain an incitement or convey

an insult is less likely to be objectionable than one that does […].55

In Jebaraj Kenneth, the EUIPO Grand BoA partially upheld the refusal to grant
registration of the sign ‘Screw You’ in relation to goods that are used by the general
public, for it ‘would inevitably cause a significant section of that public to be upset and
affronted’.56 And partially overturned as regards goods that are sold in sex shops, where
‘the relevant consuming public is unlikely to be perturbed by the use of the [applied-for]
term’.57 In reaching this decision, the Grand BoA provided guidance on the
interpretation of the exclusions by framing the inquiry in less exacting terms, as the
‘ascertain[ment of] when a sign crosses the boundary from being merely irreverent or
distasteful to being seriously abusive and likely to cause deep offence’.58 To assist future
decision-makers in this endeavour, the Grand Board went on to explain that ‘[s]igns
which contain slightly rude words or mild sexual innuendo might not be refused, but
signs which contain manifestly profane language or depict gross obscenity have no place
on the register’.59

The recent decision of the CJEU in Constantin Film Produktion has brought much to the
table in terms of harmonising the applicable legal test to the morality exclusion. For
clarity purposes, however, this test will be analysed in Section 4.3. below.

3. The Inconsistent Interpretation of the Public Policy and Morality Exclusions in

Europe (II): The Interaction Between Trade Marks and Speech

There is much uncertainty as to how the protection afforded by the right to freedom of
expression under Article 10 ECHR ought to operate in trade mark law, including in the
registration context. Proper engagement with the case law in this area requires that we
begin by introducing two topics on which we will be touching upon repeatedly in this
article. First, we must provide some background on the fundamental right to freedom
of expression enshrined in Article 10 ECHR, including its content and the scope of
protection it affords to all individuals under European law. And, second, understanding
how speech protection can be implicated in the registration context requires having a
working knowledge of the ways in which ownership of marks serves to further the
expressive interests of right holders.

3.1. The Fundamental Right to Freedom of Expression

The fundamental right to freedom of expression is enshrined in Article 10(1) ECHR. It

provides as follows: ‘[e]veryone has the right to freedom of expression. This right shall
include freedom to hold opinions and to receive and impart information and ideas
without interference by public authority and regardless of frontiers.’ Freedom of
expression lies at the very heart of democratic societies. It allows individuals to express

55 French Connection (n 5) [60].

56 R 495/2005-G, Jebaraj Kenneth (n 4) [27].
57 ibid [29].
58 ibid [19].
59 ibid [19].

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their views and engage in debate without fear of censorship by the state or other
individuals and, in so doing, allows societies to progress and flourish. Its prominent role
in society explains why the ECtHR has interpreted this fundamental right widely. For
instance, in Zana v Turkey, it held that:

Freedom of expression constitutes one of the essential foundations of a

democratic society and one of the basic conditions for its progress and for each
individual’s self-fulfilment. […] [I]t is applicable not only to ‘‘information’’ or
‘‘ideas’’ that are favourably received or regarded as inoffensive or as a matter of
indifference, but also to those that offend, shock or disturb.60

Despite constituting the cornerstone of free societies, the right to freedom of speech is
not without limits. Article 10(2) ECHR qualifies the scope of the right by providing that
‘[t]he exercise of these freedoms […] may be subject to such […] restrictions […] as are
prescribed by law and are necessary in a democratic society, […] for the prevention of
disorder or […] for the protection of […] morals’. Interference with the fundamental right
to freedom of expression might thus be justified, provided that the following
requirements are cumulatively met: (a) the measure must be prescribed by law; (b) the
measure must pursue a legitimate aim; and (c) the measure must be ‘necessary’ in a
democratic society, in the sense that the interference responds to a ‘pressing social
need’, is accompanied by ‘relevant and sufficient reasons’, and is ‘proportionate’.61

As regards the latter requirement (i.e. ‘necessity’), a fundamental part of the inquiry
revolves around determination of the margin of appreciation to be afforded to the
public authority. This varies in accordance with the type of speech interfered with.
Political and artistic expression, which are deemed to be of utmost importance for the
proper functioning of a democratic society, are worthy of heightened protection and,
thus, any interference will be strictly scrutinised. According to the ECtHR,
encroachments on political and artistic expression are ‘narrowly interpreted and the[ir]
necessity […] must be convincingly established’. 62 At the other end of the spectrum lies
commercial expression, which the ECtHR has held to be deserving of less protection.
Under this category of expression, public authorities ‘have a broad margin of
appreciation in the regulation of speech in commercial matters or advertising’.63

Determination of the type of speech involved in trade mark use will, thus, be of crucial
importance upon assessment of the compatibility of refusals of registration with Article

60 Zana v Turkey App no 18954/91 (ECtHR, 25 November 1997) [51].

61 Mouvement Raëlien Suisse v Switzerland App no 16354/06 (ECtHR, 13 July 2012)(Grand Chamber);
Murphy v Ireland App no 44179/98 (ECtHR, 10 July 2003); VgT Verein Gegen Tierfabriken v Switzerland
App no. 24699/94 (ECtHR, 28 June 2001); Hertel v Switzerland App no 25181/94 (ECtHR, 25 August 1998);
Jacubowski v Germany App no 15088/89 (ECtHR, 23 June 1994); Casado Coca v Spain App no 15450/89
(ECtHR, 24 February 1994); Open Door and Dublin Well Woman v Ireland App no 14234/88 (ECtHR, 29
October 1992); Markt Intern Verlag GmbH and Klaus Beermann v Germany App no 10572/83 (ECtHR, 20
November 1989); Barthold v Germany App no 8734/79 (ECtHR, 25 March 1985); Handyside v The United
Kingdom App no 5493/72 (ECtHR, 7 December 1976).
62 VgT Verein (n 61) [66]; Hertel (n 61) [46]; Handyside (n 61) [49].
63 Mouvement Raëlien (n 61) [61]. See also, in similar terms, Casado Coca (n 61) [50]; Markt Intern (n 61)

[33].

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10 ECHR. Speech of the type that is limited to proposing business transactions or

promoting goods and services is often deemed to constitute commercial expression. 64
As a result, most, if not all, conventional uses of trade marks will fall within commercial
expression. I am referring to uses where the mark is signalling the origin, quality or other
characteristics of goods or services, whether for purposes of informing or attracting
consumers. This was precisely the finding of the ECtHR in Dor v Romania, a case involving
the compatibility with freedom of expression of the refusal to register the sign ‘Crucifix’
on misleading grounds.65 It is very telling of the commercial nature of trade mark use
that the Court made no attempt to engage with the semantic content of the applied-for
sign in order to determine the category of speech that was at play in this case. Instead,
the Court’s conclusion that the sign amounted to commercial speech flowed naturally
from the finding that ‘the contested mark constituted an important element of the
applicant’s advertising and commercial strategy.’66

It is worth wondering, in light of this precedent, whether there is any room under the
Convention to argue that encroachments on freedom of expression involving trade
marks can be deserving of reinforced protection as a form of mixed expression, i.e. when
it simultaneously conveys a message of a commercial and a political/artistic nature.67
Although this is admittedly a long shot judging from the very limited number of
precedents to this effect in Europe, trade mark applicants looking to maximise their
chances of success would do well to pursue this line of argument in future cases.68 After
all, neither the ECtHR nor the CJEU have been asked to rule on mixed expression in the
trade mark context.

3.2. How Refusals of Registration Interfere with the Expressive Interests of Trade
Mark Applicants

The EUTMR and TMD define trade marks as ‘any signs […] that […] are capable of […]
distinguishing the goods or services of one undertaking from those of other
undertakings’.69 At their core, therefore, trade marks are signs. Signs, in turn, are units
of language that convey information and, through their use, enable communication
between two or more people. The words that I am writing right now are signs; signs
imbued with meaning that allow me to communicate with you, the reader. The same is
true of trade marks: they convey information and, through their use, enable
communication in the marketplace and even in society at large.

The fundamental information conveyed by a mark is, naturally, the commercial origin of
goods or services. For instance, the symbol of the apple with a bite or the word ‘Apple’

64 Casado Coca (n 61); Markt Intern (n 61).

65 Dor v Romania App no 55153/12 (ECtHR, 25 August 2015).
66 ibid [42].
67 This argument has also been explored by Geiger and Pontes (n 13) 21–22.
68 There are no precedents from the ECtHR or the CJEU to this effect. We can, however, find two

precedents in German case law where the use of marks in an advertising context was deemed to
constitute mixed expression and, thus, was afforded reinforced protection under the German
Constitution as political speech: Benetton II BVerfG 107, 275 (11 March 2003); Benetton I BVerfGE 102,
347 (12 December 2000).
69 EUTMR, art 4; TMD, Art 3 (emphasis added).

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are used to represent a particular commercial origin, i.e. Apple Inc. But contemporary
marks can be used to convey a wide range of meanings other than commercial origin,
ranging from signalling information about quality or reputation to conveying lifestyle
preferences that can be relied upon by individuals to pursue their preferred identity
projects.70 Going back to the previous example, the ‘Apple’ marks are loaded with
additional meanings. They are also synonym of high-quality, reliability, sleek design, and
so forth. Furthermore, they have come to symbolize a set of values, a lifestyle even: hip,
sophisticated, stylish, design-conscious and artsy. Because they provide consumers with
a wealth of useful information about the goods to which they are affixed, these
additional meanings –which are crucial to building up ‘brand image’– are extremely
valuable to right holders. So much so that firms are often willing to devote vast amounts
of resources to develop them, usually by means of costly promotional activities.

How can signs, including trade marks, develop such complex meanings? Meaning-
making in signs is the result of a social consensus, whereby individuals agree that sign
‘x’ will carry meaning ‘y’. The word ‘tree’ symbolizes the ‘woody perennial plant’ found
in nature only insofar as English speakers have agreed as much. 71 Put differently, there
is no necessary correlation between the word ‘tree’ and the meaning ‘woody perennial
plant’, but rather their relation is contingent on social convention and, as such, arbitrary.
Because social consensus is not static, meaning in signs is subject to constant
transformation. For instance, until the second half of the 20th century, the signifier ‘gay’
had one sole signified, as an adjective meaning ‘light-hearted and carefree’.72 In the
1960s, however, with the advent of the gay movement, that same signifier developed a
second signified, i.e. as a noun to refer to ‘a homosexual, especially a man’, or as an
adjective to describe someone’s ‘homosexual[ity], especially a man[’s]’. 73 The meaning
conveyed by the word ‘gay’ has evolved over time, developing an additional meaning.
Consequently, the precise meaning conveyed by the word ‘gay’ will, in contemporary
English, fluctuate from the one to the other on the basis of context, i.e. the
circumstances in which it is used.

The same is true of marks, the meanings of which may evolve over time depending on
how they are used. For example, the meaning conveyed by the trade mark ‘Aspirin’,
owned by the multinational company Bayer AG in relation to an analgesic drug,
dramatically changed over time. It went from signalling commercial origin to referring
to the class of goods, i.e. analgesic drugs.74 Genericide is, therefore, a paradigmatic
example of how meaning in trade marked signs can change over time –and of the legal
repercussions that can ensue, i.e. from enjoying full protection to being revoked from
the register.

70 The ability of contemporary trade marks to convey very diverse meanings and, thus, to perform
functions other than source-identification has been widely acknowledged in the literature and case law.
See, amongst others, Jerre B Swann, ‘An Interdisciplinary Approach to Brand Strength’ [2006] TMR 943;
David A Aaker, Matt Reback and Jerre B Swann, ‘Trademarks and Marketing’ (2001) 91 TMR 787; Alex
Kozinski, ‘Trademarks Unplugged’ (1993) 68 NYU L Rev 960.
71 The Oxford English Dictionary <www.oxforddictionaries.com> accessed 30 April 2020.
72 ibid.
73 ibid.
74 Bayer Co Inc v United Drug Co, 272 F. 505 (SDNY 1921).

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Comprehending how meaning in signs can evolve over time is crucial to understanding
how refusals of registration can effect an interference with applicants’ right to freedom
of expression. Let us think, hypothetically, of how Adidas AG’s failed attempt to register
the sign ‘Fuck Calories’ would run counter to its communicative needs. First, it would
prevent Adidas AG from using the applied-for sign in relation to its sportswear in
exclusive terms. It could be argued that exclusive access to this sign bears no impact on
the expressive interests of Adidas AG, insofar as it can still use the sign, alongside all its
competitors, for any and all purposes, including on its goods and on promotional
material. However, this view disregards the fundamental role that exclusivity plays in
allowing signs to further the communicative needs of traders when operating in the
course of trade, most notably, the ability of signs to clearly signal commercial origin –
which is only possible where exclusive use is guaranteed. If two or more traders were to
brand their trainers with the sign ‘Fuck Calories’, consumers looking to buy sports shoes
would very likely be confused as to the commercial source of each pair of trainers.

Second, Adidas AG’s advertising strategy would also be severely impacted by the
inability to use this sign in exclusive terms. Uses of marks for promotional purposes in
advertising campaigns and other marketing channels are often so onerous that Adidas
AG would lack the incentive to make the required investment on the sign ‘Fuck Calories’
if other traders were also allowed to use the sign. This was very eloquently put by the
EUIPO’s Grand BoA in Jebaraj Kenneth:

While it is true to say that a refusal to register does not amount to a gross
intrusion on the right of freedom of expression, since traders can still use trade
marks without registering them, it does represent a restriction on freedom of
expression in the sense that businesses may be unwilling to invest in large-scale
promotional campaigns for trade marks which do not enjoy protection through
registration because the Office regards them as immoral or offensive in the eyes
of the public.75

And, third, Adidas AG’s inability to use the sign ‘Fuck Calories’ in exclusive terms would,
in turn, preclude it from building a brand image around it. This could lead to the sign not
evolving in such a way as to convey the additional meanings that Adidas AG wishes to
communicate in the marketplace, notably: (a) the high quality of, and reputation
enjoyed by, its sports equipment; and (b) its belief in the desirability of leading a healthy
and stylish lifestyle, to which its products wish to contribute. 76

The refusal to register the sign ‘Fuck Calories’ as a trade mark in relation to sportswear
would, therefore, prevent Adidas AG from communicating its preferred messages
through use of its preferred sign. This would run counter to its expressive interests as
protected under Article 10 ECHR.

75R 495/2005-G, Jebaraj Kenneth (n 4) [15].

76See, discussing the role that trade mark protection can play in promoting the development of enriched
meanings of trade marked signs, Martin Senftleben, ‘Free Signs and Free Use – How to Offer Room for
Freedom of Expression within the Trademark System’ in Christophe Geiger (ed), Research Handbook on
Human Rights and Intellectual Property (Edward Elgar 2015) 356–57; Jason Bosland, ‘The Culture of Trade
Marks: An Alternative Cultural Theory Perspective’ [2005] Media & Arts L Rev 99, 111; Megan Richardson,
‘Trade Marks and Language’ [2004] Sydney Law Review 193, 212–13.

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3.3. The Interaction Between Trade Marks and Speech in the Registration Context:
An Overview of the Case Law

The fundamental argument put forth by critics of freedom of expression being

implicated in the registration context is the ‘availability’ argument. As noted on several
occasions by the UK AP, the refusal to register a mark on morality or public policy
grounds is inherently paradoxical, insofar as the sign will remain available for use by all
traders to distinguish their goods or services, instead of being used solely by the would-
be owner.77 Accordingly, a finding that a sign is immoral or contrary to public policy may
lead to the counterintuitive scenario where the sign is used more, rather than less, in
the course of trade. However, this provision is justified on grounds that signs that consist
of anti-social subject matter should not be afforded the institutional backing that ensues
from trade mark protection.78 Arnold QC was not persuaded by this rationale in French
Connection. In his view, conceptualizing registration as ‘an official seal of approval’ is
inconsistent with the act of registration, which does not imply endorsement by the
authorities, but rather the administrative recognition that an applied-for sign meets the
requirements set forth by trade mark law. 79 He thus proposed an alternative justification
for this ground of refusal: ‘to prevent the conferring of intellectual property rights which
a court would refuse to enforce’. 80

For purposes of applicants’ freedom of expression, the ‘availability’ argument can cast
doubt on refusals of registration being liable to curtail their Article 10 ECHR rights. For
instance, in its decision in Federico Cortés, the GC dismissed appellant’s free speech
claim on grounds that the ‘refusal to register [appellant’s mark] does not have an impact
on appellant’s ability to market its products using the applied-for sign nor, consequently,
on its freedom of expression’.81 This has been followed by the GC in subsequent
decisions, as well as by the EUIPO.82

These cases are not only in direct conflict with earlier case law from the GC, but also
with many decisions from the EUIPO BoA and the UK AP, as well as the opinion of AG
Bobek in Constantin Film Produktion.83

77 French Connection (n 5); Ghazilian (n 4); this has also been noted by Griffiths (n 13) 442,448–49.
78 R 2804/2014-5, Square Enix (n 4) [10]; R 168/2011-1, Türpitz (n 4) [12]; R 495/2005-G, Jebaraj Kenneth
(n 4) [13]; see also Griffiths (n 13) 429.
79 French Connection (n 5) [56].
80 ibid [57].
81 Case T-417/10, Federico Cortés (n 4) [26] (author’s translation from Spanish).
82 R 2205/2015-5, Constantin Film Produktion (n 38) [15]; R-793/2014-2, Ung Cancer (n 3) [24]; Case T-

54/13, Efag (n 4) [44]; R 168/2011-1, Türpitz (n 4) [15]. This is still the position of the EUIPO as per its
latest Examination Guidelines of early February 2020 (i.e. prior to the CJEU’s decision in Constantin Film
Produktion). EUIPO Examination Guidelines of 01 February 2020 (Part B, Section 4, Chapter 7.1)
<https://guidelines.euipo.europa.eu/1803468/1787908/trade-mark-guidelines/1-general-remarks>
accessed 28 May 2020.
83 Case C-240/18, Constantin Film Produktion (n 5) Opinion of AG Bobek [47]; R 2244/2016-2, Brexit Drinks

(n 8) [25]-[35]; R 519/2015-4, Josef Reich (n 5) [16]; R 2889/2014-4, Verlagsgruppe (n 48) [12]; French
Connection (n 5) [60(3)]; Basic (n 4) [27]; Scranage (n 4) [7],[8],[11]. The lack of consensus as to the role
that freedom of expression ought to play in the registration context has also been echoed by trade mark
scholars. Arguing in favour of Article 10 ECHR being implicated in the registration context, see Bonadio (n

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In Couture Tech, the GC seemed open to the possibility of trade mark applicants arguing
that refusals to grant registration can interfere with their speech rights. 84 After
dismissing appellant’s speech claim on the basis that it had failed to explain how the
inability to access the register would interfere with its right to freedom of expression,
the Court went on to specify that ‘there is no basis for the applicant to rely on the ECHR
in this case’.85 An a contrario interpretation would allow reading this decision in the
sense that applicants can, when properly justified, rely on freedom of expression as a
valid ground to challenge the lawfulness of refusals of registration.

Fortunately, the recognition by the EUIPO, the UK AP and the AG that speech protection
is implicated in the registration context has been less ambiguous. In Jebaraj Kenneth,
the Grand BoA held, upon assessment of the compatibility of ‘Screw You’ with Article
7(1)(f) EUTMR, that:

It is also necessary to have regard to Article 10 [ECHR] […].

The right to freedom of expression embodied [therein] includes commercial
expression and is subject to limitation only for specific purposes, which include
the prevention of disorder and the protection of morals […].86

To ensure that its decision would be compatible with the strictures imposed under the
Convention, the Grand Board went on to propose a balancing exercise that was attuned
to the specific protection afforded to freedom of commercial expression under Article
10 ECHR. In its own words:

A judicious application of [Article 7(1)(f) EUTMR] necessarily entails balancing

the right of traders to freely employ words and images in the signs they wish to
register as trade marks against the right of the public not to be confronted with
disturbing, abusive, insulting and even threatening trade marks.

If the provision is interpreted too widely, so as, for example, to include anything
which a section of the relevant public is likely to find offensive, there is a risk that
commercial freedom of expression in relation to trade marks would be unduly
curtailed.87

13) 56; Teresa Scassa, ‘Antisocial Trademarks’ (2013) 103 TMR 1172, 1190–92. By contrast, Kapff, Griffiths
and Ricolfi have argued that free speech can hardly be said to be curtailed as a result of refusals of
registration, since applicants are still able to market their goods using the contentious sign. Philipp von
Kapff, ‘Fundamental Rights in the Practice of the European Trade Mark and Designs Office (OHIM)’ in
Christophe Geiger (ed), Research Handbook on Human Rights and Intellectual Property (Edward Elgar
2015) 303; Griffiths (n 13) 448–49; Ricolfi (n 13) 471.
84 Case T-232/10, Couture Tech (n 20) [68]-[71]. This also seems to be the interpretation of the AG in Case

C-240/18, Constantin Film (n 5) Opinion of AG Bobek [51] & [fn 24]. For a contrasting view, see Bonadio
(n 13) 71.
85 Case T-232/10, Couture Tech (n 20) [71] (emphasis added).
86 R 495/2005-G, Jebaraj Kenneth (n 4) [16]-[17]. See also, in almost identical terms, R 2804/2014-5,

Square Enix (n 4) [11].

87 R 495/2005-G, Jebaraj Kenneth (n 4) [14]-[15].

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However, the Grand Board failed to apply the proportionality test mandated under
Article 10 ECHR to its full extent. Despite characterising the category of speech
interfered with in trade mark registration as commercial, the BoA did not engage with
the evidentiary threshold stemming from this finding. The commercial nature of
applicant’s speech thus operated as a mere abstract limit that ‘is regarded as a [lower]
priority than freedom of [artistic] expression and consequently it is [less] fiercely
protected.’88 How exactly it protects trade mark applicants is, however, unclear from
the Grand Board’s assessment. Ultimately, therefore, its decision to deny registration to
the sign ‘Screw You’ (for goods other than sex products) did not result from a nuanced
balancing exercise reliant on evidence of the sign’s ability to cause outrage amongst the
relevant public, but rather from an abstract assessment of morality. This is, regrettably,
a common feature in the case law, both from subsequent EUIPO Boards of Appeal and
the UK AP.89

In Application of Brexit Drinks Ltd, however, the recognition that speech protection
would be triggered by the refusal to register the sign ‘Brexit’ led the EUIPO BoA to
require a showing, by means of evidence, that the applied-for sign was liable to cause
outrage amongst the relevant public.90 In applying the Convention, the Board engaged
in a relatively nuanced assessment of the compatibility of the appealed decision with
the proportionality test mandated under Article 10 ECHR. I say relatively because the
BoA failed to engage in discussion of the type of speech that would be interfered with
as a result of the refusal to register the applied-for sign on morality grounds (i.e. whether
political, artistic or commercial). Therefore, the BoA’s efforts to ascertain the applicable
burden of proof in light of the case law of the ECtHR were misguided. By finding that
encroachments on speech ‘must be established convincingly’, the BoA opted for the
stricter threshold that is of application to political speech. 91 This led the BoA to easily
find in favour of the trade mark applicant, since the Examination Division had failed to
furnish evidence of the applied-for sign being liable to cause outrage amongst the
relevant public. Nevertheless, the evidence-based approach to morality adopted by the
BoA is worthy of praise insofar as it stems directly from the application of the
proportionality test mandated under Article 10 ECHR.

Admittedly, we can find additional precedents in the case law of decision-makers

weighing evidence of the applied-for sign’s ability to cause outrage amongst the relevant
public. In French Connection, Arnold QC’s holding that the registered mark ‘FCUK’ ought
to remain on the register was heavily reliant on the lack of evidence showing that the
public, who had long been exposed to use of the mark, had been outraged in any way. 92
Similarly, in Constantin Film Produktion, AG Bobek’s recommendation to the CJEU that
the appealed decision be set aside is based on: (a) the lack of evidence showing that
‘Fack Ju Göhte’ is deemed immoral by the relevant public; and (b) the availability of
contextual evidence that applicant’s widespread use of the applied-for sign prior to

88 ibid [24].
89 R 519/2015-4, Josef Reich (n 5); R 2889/2014-4, Verlagsgruppe (n 48); R 2804/2014-5, Square Enix (n 4);
Scranage (n 4); Basic (n 4).
90 R 2244/2016-2, Brexit Drinks (n 8).
91 ibid [34].
92 French Connection (n 5) [89]-[90].

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registration had not caused any outrage.93 Unlike in Brexit Drinks, however, these
decisions do not establish (at least not explicitly) the existence of a causal link between
the protection afforded under Article 10 ECHR and the assessment of evidence. It may
well be that Arnold QC and AG Bobek sought to further the cause of speech by applying
a fact-finding test to determination of morality. But this is speculation.94 As we will go
on to study in Section 4.4. below, this is also true of the decision of the CJEU in
Constantin Film Produktion.

To complicate things further, in its decision in Constantin Film Produktion, the GC

seemed to reject the possibility of freedom of expression ever being implicated in trade
mark law broadly considered –and not just in the registration context– when it held that
‘in the field of art, culture and literature, there is a permanent concern about
preserving freedom of expression that does not exist in the field of trade marks’.95 This
is very problematic. Quite apart from the sweeping implications that it could have in the
field, this finding is also at odds with: (a) the recitals to the EUTMR and TMD, which
provide that both instruments ‘should be applied in a way that ensures full respect for
fundamental rights and freedoms, and in particular the freedom of expression’;96 (b) the
case law of the ECtHR acknowledging that applicants’ speech can be interfered with as
a result of refusals of registration;97 and (c) several opinions from the Advocates General
addressing the compatibility of health-furthering, trade mark-restrictive measures with
Article 10 ECHR.98 On appeal before the CJEU, and to avoid such a conflicting
interpretation, that he characterizes as ‘clearly incorrect’, AG Bobek proposes to read
the GC’s decision in the sense that ‘freedom of expression […] must be taken into
account in the overall balancing exercise, [but its] protection […] is not the primary goal
of trade mark protection’.99 The proposed interpretation allows for easy reconciliation

93 Case C-240/18, Constantin Film Produktion (n 5) Opinion of AG Bobek [88]-[97].

94 The existence of a causal link between the protection afforded by freedom of expression and the
assessment of evidence in French Connection and Constantin Film Produktion may be further questioned
by reference to other cases where decision-makers have assessed evidence of a sign’s ability to cause
outrage amongst the relevant public despite freedom of expression not being implicated. In Couture Tech,
the appellant had failed to persuade the GC that the EUIPO’s refusal of registration would interfere with
its right to freedom of expression. The Court, nonetheless, relied on the provisions of the Hungarian
Criminal Code banning the use of Soviet symbols ‘as evidence of facts which enabled it to assess the
perception of symbols connected with the former USSR by the relevant public within th[at] Member
State[…]’. Case T-232/10, Couture Tech (n 20) [37]. In PAKI Logistics, the appellant made no recourse to
Article 10 ECHR upon challenging the validity of the EUIPO’s refusal to grant registration to the sign ‘Paki’.
And yet, in siding with the EUIPO, the GC engaged in detailed analysis of the evidence furnished by both
parties of the sign’s ability to cause outrage amongst the English-speaking public. Case T-526/09, PAKI
Logistics (n 4) [20]-[30]. It should also be noted that, in contrast with the decisions in French Connection
and Constantin Film Produktion, the GC did not give much weight to appellant’s claim that it had used the
sign ‘Paki’ extensively prior to registration without English-speaking consumers having raised any
concerns. ibid [35]-[36]. This provides yet another example of inconsistent adjudication in Europe. This
was also noted, in relation to French Connection, by Snedden (n 13) 277.
95 Case C-240/18, Constantin Film Produktion (n 5) Opinion of AG Bobek [21], citing Case T-69/17,

Constantin Film Produktion (n 23) [28]-[29].

96 EUTMR, Recital 21; TMD, Recital 27.
97 Dor (n 65).
98 Case C-547/14, Philip Morris Brands SARL and Others v Secretary of State for Health (2016)

EU:C:2016:325 Opinion of AG Kokott; Case C-376/98 Germany v European Parliament (2000) ECR I-8419
Opinion of AG Fennelly.
99 Case C-240/18, Constantin Film Produktion (n 5) Opinion of AG Bobek [57].

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of the decision of the GC with settled case law. At a more abstract level, however, this
discussion illustrates the worrying degree of uncertainty governing the interaction
between marks and speech.100

4. The Decision of the CJEU in Constantin Film Produktion: An End to the Inconsistent
Interpretation of the Public Policy and Morality Exclusions?

In the interests of clarity, our analysis of the decision of the CJEU in Constantin Film
Produktion will mirror the structure used throughout this piece.

4.1. On the Conceptual Boundaries of the Public Policy and Morality Exclusions

Regrettably, the decision of the CJEU fails to engage with AG Bobek’s insightful analysis
of the conceptual differences between the public policy and morality exclusions,
including the extent to which they can sometimes overlap. Instead, the Court begins its
analysis by holding that only the morality exclusion is triggered in this case and, thus, it
will not deal with the public policy ground of refusal.101

This constitutes a missed opportunity on the part of the Court to bring much-needed
clarity to the interpretation of this controversial aspect of the exclusions, especially in
light of the diverse approaches adopted to date by different decision-makers in Europe.
This is perhaps more surprising in light of the GC’s finding, in the appealed decision, that
public policy and morality very often overlap and, thus, there is no need to distinguish
between the two –a finding that AG Bobek rejected categorically and sought to redress
in his opinion. The CJEU’s refusal to uphold or –more likely– overturn the finding of the
GC in this regard is, thus, deeply troubling, as it may lead European decision-makers
(notably the EUIPO and the GC) to follow this rationale in future cases, further muddying
this area of law.

Relying on the opinion of AG Bobek, the CJEU goes on to define the morality exclusion
as ‘the fundamental moral values and standards to which a society adheres at a given
time.’102 Defining ‘accepted principles of morality’ as ‘moral values and standards’
seems to add very little to our understanding of this exclusion. The last element of the
definition –i.e. at a given time– is, however, deserving of attention. By acknowledging
that ‘[t]hose values and norms […] are likely to change over time and space, [the Court
holds that they] should be determined according to the social consensus prevailing in
that society at the time of the assessment.’103 Acknowledgement of the time-sensitive

100 The GC’s finding (and even the AG’s opinion) may be difficult to reconcile with trade marks’ increasing
role as cultural artefacts allowing individuals to pursue their preferred identity projects through
expressive use of marks that are laden with meanings beyond source identification. For further insights
into this fascinating topic, see Dev S Gangjee, ‘Property in Brands’ in Helena Howe and Jonathan Griffiths
(eds), Concepts of Property in Intellectual Property Law (Cambridge University Press 2013); Bosland (n 76);
Keith Aoki, ‘(Intellectual) Property and Sovereignty: Notes Toward a Cultural Geography of Authorship’
Stanford LR 1996; Rosemary J Coombe, ‘Objects of Property and Subjects to Politics: Intellectual Property
Laws and Democratic Dialogue’ [1991] Texas LR 1853.
101 Case C-240/18, Constantin Film Produktion (n 5) [38].
102 ibid [39] (paraphrasing from the Opinion of AG Bobek [77]).
103 ibid [39].

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nature of moral values has profound ramifications in the registration context. Notably,
it allows for: (a) currently registered, morally acceptable signs to be removed from the
register in the future, in instances where the meaning conveyed by the mark is no longer
deemed socially acceptable; 104 and (b) previously refused signs to be registered in the
future, provided the social consensus around their morally objectionable meaning has
evolved favourably. Though leading the way for increased uncertainty, these
considerations are not new to trade mark law, judging from other absolute grounds for
refusal, such as: (a) genericity;105 or (b) the lack of inherent distinctiveness, which may
be overcome by means of acquired distinctiveness.106

The time-sensitive nature of the morality exclusion can serve to incentivise processes of
reclaim in meaning of signs that are currently deemed immoral but that may, through
use in the course of trade, become socially acceptable. As we saw in Section 3.2., trade
mark use contributes to meaning-making in signs. As a result, a trader wishing to register
as a mark a sign that is morally objectionable may opt to use it (in non-exclusive terms)
in the course of trade with a view to reclaiming its morally objectionable meaning.
Where these efforts result, over time, in a shift in the social perception of the sign so
that it is no longer deemed immoral, it will be granted access to the register.

Admittedly, the incentive provided by the time-sensitive nature of the morality

exclusion for traders to engage in processes of reclaim in meaning of signs is rather low.
In line with our previous analysis, so long as traders are unable to use a sign in exclusive
terms, it is unlikely that they will enter into the sorts of investments required to shift its
social perception. Ideally, therefore, processes of reclaim in meaning of morally
objectionable signs should be further incentivised by means of registration.107 Where
applicants can reasonably be expected to use morally objectionable signs in socially
valuable ways, it is difficult to see how refusals to grant them registration as trade marks
could be compliant with Article 10 ECHR. Surely society would benefit from free speech
guarantees being implemented with a view to expanding the pool of available signs that
conform with democratic principles.

This was precisely the argument put forward by appellant in Square Enix. Its speech-
based challenge was grounded, inter alia, on the contention that the EUIPO’s refusal to
grant registration to the sign ‘Mechanical Apartheid’ would prevent it ‘from
commenting on (the abhorrent policy of) racial segregation in the context of its work’ –
the most straightforward form of reclaiming the meaning of a sign.108 Unfortunately,

104 For a discussion of the difficulties that could potentially ensue from revocation of marks that become
morally objectionable after registration, see Snedden (n 13) 278–79.
105 EUTMR, Art 7(1)(d); TMD, Art 4(1)(d); UK TMA, s 3(1)(d).
106 EUTMR, Arts 7(1)(b) and 7(3); TMD, Arts 4(1)(b) and 4(4); UK TMA, ss 3(1) and 3(1)(b).
107 Arguing against this view, an EUIPO BoA has held that ‘[w]ords or acts which are contrary to the

accepted principles of morality today can also be morally acceptable tomorrow. But such changes should
not be promoted by trade mark law.’ R 493/2012-1, EFAG Trade Mark Company GmbH ('Ficken’) 18
October 2012 (EUIPO Board of Appeal) [28]. The ability of this precedent to cast doubt on the meaning-
reclaim argument proposed here is rather limited since the Board’s analysis was detached from the
protection afforded to applicants under Article 10 ECHR. However, it serves to illustrate the skepticism
with which this argument may be met by future decision-makers.
108 R 2804/2014-5, Square Enix (n 4) [3].

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however, the BoA failed to address this claim in its decision. In any event, and judging
from the wealth of cases where decision-makers have refused to give much weight to
the manner in which the applicant intends to use the applied-for sign, it is difficult to
see how the meaning-reclaim argument proposed here could ever be successful. For
instance, in French Connection, Arnold QC held that:

A mark is only objectionable under [the exclusion] if its use would contravene a
generally accepted moral principle by reason of its intrinsic qualities. The reason
for this is that, even if the applicant intends to use it in a particular way, his
intention may change. Furthermore, the application or registration may be
assigned to someone else. Thus the manner in which the mark is subsequently
used can neither infect the mark with, nor immunise it from, objectionability. 109

In similar terms, the GC has held that the assessment of the grounds of refusal contained
in Article 7(1) EUTMR (including public policy and morality) must be undertaken on the
basis of ‘the intrinsic qualities of the mark applied for and not [of] circumstances relating
to the conduct of the person applying for the trade mark’. 110 This has on occasion been
followed by the EUIPO.111

There is, however, at least one precedent where the EUIPO has been willing to factor in
the personal characteristics of the applicant and the type of use to which it allegedly
intends to subject the mark when assessing the morality of an applied-for sign. In
Application of Josef Reich, a case involving registration of the sign ‘Jewish Monkeys’ by
a member of an eponymous klezmer music band who is of Jewish faith and uses the sign
for satirical purposes, the BoA granted registration to the applied-for sign after finding
that:

The identity of the applicant must certainly be taken into account in the context
of Article 7(1)(f) [EUTMR] […]. According to the overall content of the case file, it
can be ruled out that in the manner in which the sign applied for is likely to be
used (i.e. not in the context of anti-Israeli political propaganda), the recipients of
the goods and services will feel personally targeted and therefore insulted by the
designation ‘Jewish Monkeys’.112

Two things should be noted here. First, these examples serve to illustrate yet another
aspect of the public policy and morality exclusions where European decision-makers
have not been able to reach a consensus. And, second, if followed by future decision-
makers, the approach adopted by the BoA in Josef Reich could very well accommodate
applicants’ speech-based challenges to refusals of registration on grounds that they
prevent them from effective engagement in processes of reclaim in meaning of signs.
Judging from the prevailing case law, however, it is unlikely that this approach will take
hold in Europe, at least for the time being.

109 French Connection (n 5) [88].

110 Case T-1/17, La Mafia (n 28) [40]; Case T-140/02, Sportwetten GmbH v OHIM (2005)
ECLI:EU:T:2005:312 [28].
111 R 2244/2016-2, Brexit Drinks (n 8) [13].
112 R 519/2015-4, Josef Reich (n 5) [17] (emphasis added).

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But even in instances where decision-makers are unwilling to factor in the identity and
the intended use of the applied-for sign, processes of reclaim in meaning may still
prosper where the applied-for sign is deserving of reinforced protection under Article
10 ECHR as a form of mixed expression. Even though this may seem like a long shot
judging from the very limited number of precedents to this effect, it is certainly worth
the try.113 Naturally, this argument can only be persuasive where the sign is clearly
expressive, in the sense of seeking to own and reclaim terms that convey political ideas
that are socially relevant, as in the case of ‘(Mechanical) Apartheid’ or ‘Jewish Monkeys’.
Because such terms ought to be afforded heightened protection as mixed expression, it
is arguably the case that refusals to grant them registration might not meet the stricter
test of proportionality provided for under Article 10 ECHR. 114 It would, thus, be
interesting to see what European decision-makers would make of this argument if they
were to address it in the future.

4.2. On the Definition of Relevant Public

Unfortunately, the decision of the CJEU fails to engage with the definition of relevant
public put forth by the GC to any meaningful extent. As we saw earlier, neither appellant
nor the EUIPO had challenged the finding that the relevant public in this case consists
solely of German-speaking consumers. The Court thus limits itself to reiterating the
definition provided by the GC, acknowledging that ‘it is not disputed’. 115

However, the implications of this finding in terms of advancing appellant’s case do not
go unnoticed by the Court:

[T]he perception of that English phrase [‘Fack Ju Göhte’] 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.116

This is one of several factors that lead the Court to find in favour of the trade mark
applicant. The Court’s assessment of morality is, thus, greatly influenced by the GC’s
(mis)definition of relevant public. Failure to include the English-speaking section of the
EU public within the definition undeservedly tilts the scales in favour of the trade mark
applicant. This is very problematic. Quite apart from setting a dubious precedent for
future decision-makers to follow on the correct interpretation of Article 7(2) EUTMR,
the definition of relevant public put forth in Constantin Film Produktion fails to honour
the policy objectives underpinning the morality exclusion. After all, the English-speaking

113 See text to n [68].

114 Although their discussion is detached from processes of reclaim in meaning, Geiger and Pontes also
believe that refusals of registration of signs that fall under mixed expression will be more strictly
scrutinised by European decision-makers. They are also of the view that this argument will only prosper
where a sign clearly conveys a political message, as with ‘Jewish Monkeys’. Geiger and Pontes (n 13) 21–
22.
115 Case C-240/18, Constantin Film Produktion (n 5) [45].
116 ibid [68].

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section of the EU public is also bound to come across the sign ‘Fack Ju Göhte’ once it is
registered as an EU mark despite their interest –i.e. in having their moral values
safeguarded– having been disregarded by the CJEU.

4.3. On the Applicable Test to the Morality Exclusion

The decision of the CJEU in Constantin Film Produktion is bound to drastically change
decision-makers’ interpretation of the morality exclusion moving forward. In a rather
bold move, the Court overturns the appealed decision on grounds that ‘the General
Court […] could not confine itself to an abstract assessment of […] [the applied-for] mark
and of the English expression to which the first part of it is assimilated by that public.’ 117
In so doing, the CJEU quashes the objective legal test that has been applied by the vast
majority of decision-makers to date. Instead, they must now look for contextual
evidence that the applied-for sign is/is not morally objectionable before reaching a
conclusion as to whether it ought to be denied registration. Given the numerous
implications of this finding, it is worth quoting the CJEU in full:

The examination to be carried out cannot be confined to an abstract assessment

of the mark applied for […], but it must be established, in particular where an
applicant has relied on factors that are liable to cast doubt on the fact that that
mark is perceived by the relevant public as contrary to accepted principles of
morality, that the use of that mark in the concrete and current social context
would indeed be perceived by that public as being contrary to the fundamental
moral values and standards of society.118

Reviewing the appealed decision through the lens of this fact-sensitive test, the Court
concludes that the GC had failed to give proper consideration to the various factors put
forth by the applicant as contextual evidence of the applied-for sign being morally
acceptable in German-speaking circles. According to the Court:

[T]he General Court […] could not rely solely on the intrinsically vulgar character
of that English phrase without examining those factors or setting out
conclusively the reasons why it considered, despite those factors, that the
German-speaking public at large perceives that sign as running counter to the
fundamental moral values and standards of society when it is used as a trade
mark.119

The factors on which the applicant had grounded its claim that the sign ‘Fack Ju Göhte’
was not morally objectionable were as follows. First, there was no evidence that the
applied-for sign, used extensively in the titles of its movies prior to filing for registration,
had caused any outrage amongst the public who had encountered the sign and/or
watched the movies. Second, young people had been authorised to watch the movies
in Germany, including in schools, despite their titles containing the applied-for sign. And,
third, the Goethe Institut (i.e. Germany’s cultural institute) had been using the movies

117 ibid [50].

118 ibid [43].
119 ibid [53].

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(including their titles) for educational purposes. These factors carry much weight in the
Court’s analysis. Because they provide contextual evidence that ‘Fack Ju Göhte’ is not
liable to cause outrage amongst the relevant public, and there is no evidence to the
contrary effect, applicant’s request for registration ought to be granted.

In siding with appellant, the Court takes into consideration three additional factors that
mitigate the applied-for sign’s ability to cause outrage amongst the relevant public.120
First, the applied-for sign contains an element that is not vulgar, i.e. the word ‘Göhte’ at
the end. Second, the applied-for sign does not consist of the English expression ‘Fuck
You’, but rather of its phonetic transcription in German ‘Fack Ju’. And, third, as we saw
earlier, the definition of the relevant public as German-speaking reduces the emotional
resonance of the curse word ‘Fuck You’ and, consequently, its ability to cause outrage.
Although difficult to determine with any certainty, these considerations are unlikely to
carry much weight in the Court’s assessment –and could, presumably, be easily
overcome by a showing that the applied-for sign causes outrage amongst the public.
After all, these factors do not constitute evidence of the public’s reaction to the applied-
for sign, but rather form part of an abstract assessment of the sign’s vulgarity in light of
its signifier, its meaning and the linguistic characteristics of the relevant public.

In weighing the available evidence, the CJEU shows a fair degree of sophistication. It
distinguishes between, on the one hand, the global assessment of morality of the
applied-for sign that ought to be undertaken in the registration context, and, on the
other, the specific use to which such sign had been subjected by the applicant prior to
filing for registration. This is a very relevant, and pertinent, distinction. Determining
whether the expression ‘Fack Ju’ is contrary to accepted principles of morality in global
terms –that is, in all potential instances of trade mark use and in relation to all members
of the relevant public– is not a realistic endeavour. This likely explains why most
decision-makers had hitherto opted to undertake an abstract assessment of an applied-
for sign’s compatibility with society’s moral values. But the CJEU has now rejected this
possibility. To bridge this gap, the Court relies on contextual evidence that the applied-
for sign is/is not morally objectionable. According to the Court, ‘the fact that it is […]
[the applied-for] mark itself which is to be examined does not mean that […] contextual
elements capable of shedding light on how the relevant public perceives that mark could
be disregarded.’121 But contextual evidence is necessarily limited in scope, in the sense
that it cannot possibly capture all instances where the applied-for sign will be deemed
morally objectionable or morally acceptable by the relevant public. The Court
acknowledges as much when it holds that ‘although the success of a film does not
automatically prove the social acceptance of its title and of a word sign of the same
name, it is at least an indication of such acceptance’.122 By the same token, the CJEU is
willing to concede that contextual evidence to the opposite effect may well exist and
could, potentially, frustrate applicant’s efforts to have the sign registered as a mark. In
the case at hand, however, the lack of any such evidence serves the Court to easily find
in favour of the applicant. In its own words:

120 ibid [68].

121 ibid [51].
122 ibid [65].

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[I]n view of the fact that no concrete evidence has been put forward plausibly to
explain why the German-speaking public at large will perceive 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, even though that same public does not
appear to have considered the title of the eponymous comedies to be contrary
to accepted principles of morality, it must be held that the EUIPO [was wrong to
deny registration to the applied-for mark].123

The adoption, by the CJEU, of an empirical test of morality in Constantin Film Produktion
will arguably broaden the range of marks that can be registered under the exclusion.
After all, the lack of evidence of an applied-for sign’s ability to cause outrage amongst
the relevant public will lead the trade mark office to grant it registration. More
importantly, by harmonising the applicable legal test to the morality exclusion, this
decision is bound to bring clarity and consistency to the interpretation of Article 7(1)(f)
EUTMR in Europe.

There is, however, one aspect of the proposed test that can prove problematic for future
decision-makers. The fact pattern in Constantin Film Produktion appears to be ideally
suited for the sort of fact-sensitive, contextual approach to the moral implications of an
applied-for sign developed by the CJEU. The sign had been used extensively since 2013
–in the title of the eponymous movies and, presumably, on related marketing
campaigns, merchandising, etc.– and, thus, prior to the applicant’s filing for registration,
in 2015. This begs the question: how are trade mark offices and appeal courts expected
to undertake this fact-sensitive, contextual analysis in instances of applied-for signs that
have not yet been used, or only to a limited extent?

Admittedly, the CJEU provides some guidance on potential sources of evidence that
could be relied upon by decision-makers to determine the public’s reaction to the
morally objectionable meaning conveyed by the applied-for sign, ‘such as legislation and
administrative practices, public opinion and, where appropriate, the way in which the
relevant public has reacted in the past to that sign or similar signs’.124 It is unclear,
however, how useful these sources will prove to be in everyday adjudication. Some of
them appear to be unfit for purpose. In the unlikely event that legislation, or even
administrative practices, were to deal with social perceptions on the morality of signs,
these sources can put the empirical nature of the test developed by the Court at risk.
Insofar as they embody the opinions of legislatures and administrative personnel,
legislation and administrative practices are not necessarily reflective of the views on
morality held at the time of registration by the relevant public, as defined for trade mark
purposes. Judging from AG Bobek’s opinion, such sources are better suited to
ascertaining what amounts to public policy, not morality. As part of his insightful
discussion of the extent to which public policy and morality overlap, the AG considers
that ‘[p]ublic policy can […] be studied […] in the offices of public authorities, by

123 ibid [69].

124 ibid [42].

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reference to laws, policies, and official statements.’ 125 This is in contrast with accepted
principles of morality, which ‘cannot be detected outside of social norms and context.
Their identification requires at least some empirical assessment of what the relevant
society […] considers […] to be acceptable norms of conduct.’ 126

Moreover, trade mark offices and appeal courts are not well suited to engage in the sort
of fact-finding exercises that are required to extract evidence from these sources. This
is especially true of data reflecting public opinion, as well as evidence of how the
relevant public has reacted in the past to identical or similar signs. If the CJEU has market
studies in mind here, they could very easily backfire. There is no consensus in Europe as
to the role that surveys ought to play in trade mark law. Whereas EU and German courts
are often willing to accept surveys as evidence of consumer perception in cases dealing
with likelihood of confusion and distinctiveness, the courts of England and Wales have
been increasingly reluctant to give considerable weight, and on occasions even admit,
this form of evidence.127 Furthermore, trade mark offices cannot be realistically
expected to be able to elaborate, or even commission, the sorts of market studies that
would be necessary to assess a mark’s ability to cause outrage amongst the relevant
public.

It will, thus, be interesting to see what sources decision-makers rely on to justify the
immorality of an applied-for sign, and whether the fact-finding mechanisms they employ
will be sophisticated enough to meet the burden of proof imposed by the CJEU in
Constantin Film Produktion. A burden of proof that, admittedly, is not clear from the
decision. The opinion of AG Bobek proves useful here too. In his view, the evidentiary
threshold that the EUIPO must meet if it wishes to deny registration to an applied-for
sign on morality grounds need not be very high. In his own words:

It is certainly not suggested that EUIPO would have to conduct an in-depth

empirical survey to establish the accepted principles of morality vis-à-vis a given
sign. Indeed, […] the best they can provide is an ‘informed estimation’. However,
that estimation must be grounded in a specific social context, and it cannot
ignore factual evidence that either confirms or possibly casts doubt on […] what
does or does not conform to accepted principles of morality.128

It is unclear whether the CJEU would agree with the evidentiary threshold proposed by
AG Bobek. Doing so would certainly alleviate some of the difficulties outlined above, but
not all. Trade mark offices would still have a hard time conducting empirical surveys,
even if they need not be in depth.

125 ibid Opinion of AG Bobek [79]. See, in similar terms, the decision of the EUIPO BoA in R 803/2016-1,
Application of La Mafia Franchises SL ('La Mafia se Sienta a la Mesa’) 27 October 2016 (EUIPO Board of
Appeal) [20] & [22].
126 Case C-240/18, Constantin Film Produktion (n 5) Opinion of AG Bobek [80].
127 For a detailed discussion of the divergent approaches to consumer surveys adopted in different

European jurisdictions, see Alexander Bayer and others, ‘The Value and Treatment of Survey Evidence in
Different Jurisdictions’ (2010) 100 TMR 1373. As regards the courts of England and Wales, see also Marks
and Spencer v Interflora [2012] EWCA Civ 1501.
128 Case C-240/18, Constantin Film Produktion (n 5) [83].

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In any event, the uncertainty stemming from the empirical nature of the test is not
bound to threaten its consistent application moving forward. As was already mentioned,
the lack of evidence showing that an applied-for sign is morally objectionable will
necessarily lead decision-makers to grant it registration.

4.4. On the Interaction Between Trade Marks and Speech

The CJEU should be praised for addressing and, at least partially, redressing the core
shortcoming identified in the case law: the uncertainty as to whether the right to
freedom of expression can be implicated in trade mark registration. According to the
Court:

[C]ontrary to the General Court’s finding […] that ‘there is, in the field of art,
culture and literature, a constant concern to preserve freedom of expression
which does not exist in the field of trade marks’, freedom of expression […] must,
as […] the Advocate General states in points 47 to 57 of his Opinion, be taken
into account when applying Article 7(1)(f) [EUTMR]. Such a finding is
corroborated, moreover, by recital 21 […], which expressly emphasise[s] the
need to apply th[e] regulation[…] in such a way as to ensure full respect for
fundamental rights and freedoms, in particular freedom of expression. 129

By harmonising one aspect of the interaction between marks and speech that had been
highly contested, the Court’s finding that Article 10 ECHR is implicated in trade mark
registration is a welcome development. The very few commentators who have
addressed this decision to date (practitioners writing in the blogosphere, for the most
part) have hailed it as such.130 Unfortunately, however, the CJEU fails to build on this
finding, leaving the more substantial questions raised by the interaction between marks
and speech unanswered.

First, the Court fails to explain why speech protection is implicated in trade mark
registration. Admittedly, the Court alludes to Recital 21 EUTMR to support its finding
that speech interacts with trade mark applications. But finding support in the text of the
Regulation is not the same thing as setting forth the reason(s) why both sets of rights
interact. Is it because registration as a trade mark of an applied-for sign furthers the
expressive interests of the applicant? And, if so, how? Understanding the rationale
behind the CJEU’s finding would have gone a long way in guiding future decision-makers’
interpretation of the interaction between marks and speech. This is certainly true of the
morality and public policy exclusions. As regards the former, it would have allowed
framing the legal test developed by the Court within the broader policy considerations
stemming from the interaction between marks and speech. As for the latter, it would

129ibid [56] (emphasis added).

130Cheryl Payne and Julius Stobbs, ‘Trade Mark Case: FACK JU GÖHTE – Constantin Film Produktion v
EUIPO’ (Kluwer Trademark Blog, 19 March 2020)
<http://trademarkblog.kluweriplaw.com/2020/03/19/trade-mark-case-fack-ju-gohte-constantin-film-
produktion-v-euipo/> accessed 29 April 2020; Jorge Llevat, ‘Las Buenas Costumbres y El Registro de La
Marca FACK JU GÖHTE <https://blog.cuatrecasas.com/propiedad-intelectual/buenas-costumbres-
registro-marca-fack-ju-gohte/> accessed 29 April 2020; Łukasz Żelechowski, ‘CJEU Rules on Absolute
Ground Concerning Marks Contrary to Accepted Principles of Morality’ [2020] JIPLP.

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have enabled future decision-makers to propose a harmonised legal test for

determining that an applied-for sign is contrary to public policy –following in the Court’s
footsteps in Constantin Film Produktion. But a more sophisticated understanding of the
interaction between marks and speech could have had ramifications beyond Article
7(1)(f) EUTMR, into other areas of trade mark law where speech interests are also at
stake, notably infringement. The CJEU’s shying away from these issues is, thus,
regrettable. And while optimists may well argue, in light of Recital 21 EUTMR, that the
need to factor in the diversity of fundamental rights involved in trade mark law will lead
future courts to take into account speech interests in other areas of the discipline too,
this is already a stretch from the CJEU’s strict finding in Constantin Film Produktion.

Second, the Court fails to explain how its finding that speech protection is implicated in
trade mark law builds into the test developed to determine when an applied-for sign is
morally objectionable and, thus, unregistrable. Judging from its decision, it would
appear that the Court believes both elements to operate irrespective of each other –i.e.
the fact that speech protection is implicated in trade mark law has no bearing on the
applicable test. This can be seen from the way in which the Court’s arguments are
structured, which provides an insight into its thought process. The order in which the
Court’s ideas are presented is rather counterintuitive. The CJEU develops its empirical
test for morality in the first place, leaving its analysis of whether speech protection is
implicated in trade mark law for the end. A more logical approach to the case would,
however, require reversing the order in which both elements are explored, insofar as
the applicable test under the morality exclusion is ultimately dependent on the
protection afforded to trade mark applicants by virtue of Article 10 ECHR. Doing
otherwise risks distorting the boundaries of the morality exclusion.

By remaining silent on the existence of a causal relation between freedom of expression

being implicated in trade mark law, on the one hand, and the applicable test to the
morality exclusion, on the other, the Court’s approach is amenable to misinterpretation,
in two ways. First, it can be construed as implying that Article 10 ECHR plays no role
whatsoever in determining the degree of protection that trade mark applicants should
be afforded upon applying for registration of morally dubious signs. And, second, at the
other end of the spectrum, this decision could be read to mean that Article 10 ECHR
affords trade mark applicants an additional layer of protection when filing for
registration of morally objectionable signs –further increasing the evidentiary threshold
that decision-makers must meet in order to declare such signs unregistrable. It is highly
unlikely that the CJEU meant to adopt either of these approaches. Constantin Film
Produktion thus constitutes a good example of how risk-avoidance in judicial decision-
making can lead to further uncertainty in an area of law. It may well be that the Court
sought to further the cause of speech in EU trade mark law by developing a fact-finding
test. But this is speculation. Therefore, and to avoid speculation, the Court should have
been more careful to tie its finding that marks and speech interact to the test developed
under the morality exclusion.

This would have been best achieved by analysing the compatibility of the appealed
decision denying registration to the sign ‘Fack Ju Göhte’ with the proportionality test
mandated under Article 10 ECHR. For reasons that I will go on to explain, this analysis

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would not have altered to any meaningful extent the substance of the test of morality
proposed by the CJEU. This is perhaps counterintuitive. However, the empirical nature
of this test conforms with the evidentiary requirements imposed under Article 10 ECHR
for encroachments on speech to be justified. To illustrate this, I will guide the reader
through the application of the proportionality test mandated under the Convention to
the morality exclusion.

As we saw in Section 3.1., the justifiability of a public measure encroaching on freedom

of expression is contingent on a plurality of factors: (a) the measure must be prescribed
by law; (b) the measure must pursue a legitimate aim; and (c) the measure must be
‘necessary’ in a democratic society. The first two limbs of the test will be easily met in
cases dealing with the morality of applied-for signs, since refusals of registration on this
ground are: (a) prescribed by Article 7(1)(f) EUTMR; and (b) with the aim of safeguarding
society’s core moral values.

The ‘necessity’ limb of the test can prove more problematic. A fundamental part of the
inquiry revolves around determination of the margin of appreciation to be afforded to
the trade mark office or appeal court. This will vary in accordance with the type of
speech interfered with. While having a comical element, ‘Fack Ju Göhte’ is unlikely to be
deemed a sign with a strong ideological component of the sort that can be easily used
to engage in mixed expression. Our analysis will, thus, operate on the basis that the
category of speech interfered with in Constantin Film Produktion is commercial.

Under commercial expression, public authorities ‘have a broad margin of appreciation

in the regulation of speech in commercial matters or advertising’.131 From the
perspective of the judicial review undertaken by the ECtHR, this sometimes translates
into ensuring that the interference with freedom of commercial expression is ‘justifiable
in principle’.132 On other occasions, the Court has referred to measures restricting
speech as being justified on ‘reasonable grounds’.133 This is not to say that
encroachments on commercial expression will not ‘be closely scrutinised by the
Court’,134 which must ‘weigh the requirements of the protection of the [public good
justifying the challenged measure] against the [encroachment on appellant’s freedom
of expression]’.135 Extrapolated to the registration context, this would entail balancing
the need to protect the moral values of the relevant public against the encroachment
on applicant’s speech resulting from the refusal of registration. A balancing exercise that
requires, for a finding that the refusal of registration legitimately interferes with
applicants’ freedom of expression, a modicum of evidence to the effect that the applied-
for sign is contrary to accepted principles of morality.

At least in principle. An overview of the case law of the ECtHR reveals that the broad
margin of appreciation enjoyed by public authorities in cases involving interferences

131 Mouvement Raëlien (n 61) [61]. See also, in similar terms, Dor (n 65) [51]; Casado Coca (n 61) [50];
Markt Intern (n 61) [33].
132 Markt Intern (n 61) [33].
133 ibid [37]; Groppera Radio AG and Others v Switzerland App no 10890/84 (ECtHR, 28 March 1990) [73].
134 Casado Coca (n 61) [51]; Mouvement Raëlien (n 61) Dissenting Opinion of Judges Sajó, Lazarova

Trajkovska and Vučinić [II].

135 Markt Intern (n 61) [34].

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with commercial expression often renders the proportionality exercise futile. This is
especially true of its more recent case law, where the Court’s analysis of whether a
restriction is ‘necessary’ is governed by the very deferential principle that ‘national
authorities are […], by reason of their direct and continuous contact with the vital forces
of their countries, in a better position than the international judge to give an opinion on
the “necessity” of a “restriction”’.136 This deferential approach often leads the Court to
deny relief to appellant after a rather cursory analysis that requires little to no evidence
of necessity.137 Although several judges within the ECtHR have voiced their concerns
over this deferential approach, it is doubtful that they will steer the Court towards
demanding more robust justification of the necessity limb of the test in cases involving
commercial expression.138 Regardless of the outcome of this debate, speech-based
challenges to refusals of registration of morally objectionable signs are unlikely to ever
escape this very deferential approach. The ECtHR has consistently held that the same
approach is of application to cases dealing with the ascertainment of public morals –
including in Dor, where appellant’s speech had been interfered with as a result of the
refusal to register the religious sign ‘Crucifix’ on misleading grounds.139

In any event, this discussion is for the most part superfluous for purposes of our current
assessment. The fact that the Convention affords public authorities a very broad margin
of appreciation in cases involving interferences with commercial expression, especially
where moral values are involved, does not prevent them from properly justifying their
findings under Article 10 ECHR. Put differently, while not being required to ground their
findings on ‘reasonable grounds’, decision-makers may still decide to do so. If anything,
such an approach affords an additional layer of protection to individuals’ freedom of
expression. This is arguably what the CJEU chose to do in Constantin Film Produktion.
The fact-sensitive test developed by the Court would seem to conform to the
requirement that refusals of registration be ‘closely scrutinised’, in the sense of being
justified on ‘reasonable grounds’. It is, thus, compatible with the proportionality
requirements mandated under Article 10 ECHR. 140

This is not to say that the CJEU was right to ignore the proportionality test provided for
under the Convention. Framing the judicial inquiry in morality cases within this test
would have offered several advantages. First, it would have allowed the Court to tackle
the question as to whether Article 7(1)(f) EUTMR, by imposing public policy and morality
as limits to registrability, already takes into account the balancing of rights mandated
under Article 10 ECHR. In Basic, Hobbs QC had put forth such an interpretation of the

136 Dor (n 65) [49]; Mouvement Raëlien (n 61) [63].

137 As regards interferences withcommercial expression, see Mouvement Raëlien (n 61) [63]; Casado Coca
(n 61) [55].
138 Mouvement Raëlien (n 61) Dissenting Opinion of Judges Sajó, Lazarova Trajkovska and Vučinić [V]. A

similar criticism was put forth in Lautsi and Others v Italy Ap no 30814/06 (ECtHR, 18 March 2011)
Dissenting Opinion of Judge Malinverni, joined by Judge Kalaydjieva [1].
139 Dor (n 65) [51]; Murphy (n 61) [67]; Wingrove v The United Kingdom App no 17419/90 (ECtHR, 25

November 1996) [58].

140 For a thought-provoking account of why the empirical test of morality adopted by the CJEU cannot, in

abstract terms, be said to effect a ‘necessary’ encroachment on applicants’ freedom of expression, see
Endrich-Laimböck and Schenk (n 13).

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public policy and morality exclusions.141 This interpretation was, however, expressly
rejected by AG Bobek in his opinion in Constantin Film Produktion –a matter on which
the CJEU remained silent.142 Accordingly, this is still a contested issue. Second, applying
the proportionality test under Article 10 ECHR to the morality exclusion would have
allowed for the consistent application of the human rights guarantees set forth in the
Convention. Third, and most importantly, it would have served to illustrate how the
balancing exercise in cases involving the interaction between marks and speech ought
to be undertaken under EU law. This could have paved the way for future decision-
makers dealing with this interaction in the context of the public policy exclusion, and
even beyond registration –notably in trade mark infringement, where the degree of
inconsistency is very worrying too.143

5. Conclusion

The interpretation of the public policy and morality exclusions has proved to be a
controversial subject in European trade mark law. Contrary to the common belief that
inconsistencies in this area of law result from decision-makers’ failure to properly
engage with the interaction between marks and speech, this article has shown that
there are several sources of inconsistency. It is only if decision-makers acknowledge and
address all sources identified that it will be possible to bring the required level of
consistency to the interpretation of Article 7(1)(f) EUTMR. The CJEU, in particular, must
play an active role in further harmonising the interpretation of the public policy and
morality exclusions, building on its decision in Constantin Film Produktion.

As we have seen, this decision ultimately constitutes a missed opportunity on the part
of the Court to redress the core shortcomings identified in the case law. First, the Court
fails to address the conceptual differences between both exclusions and, thus, to clarify
whether they can sometimes overlap and, if so, to what extent. Second, although bound
by procedural considerations, the Court does not question the definition of relevant
public provided by the EUIPO BoA and subsequently accepted by the GC. This leads the
Court to assess the morality of the sign ‘Fack Ju Göhte’ without taking into consideration
the English-speaking public within the EU, despite ‘Fuck You’ being a vulgar expression
in the English language. Third, while the CJEU proposes a fact-sensitive test of morality
that is bound to harmonize the interpretation of the morality exclusion, it fails to do the
same for the public policy exclusion. And, fourth, the Court’s efforts to bring clarity to
the interaction between marks and speech in the registration context are insufficient.
The Court should have explored the complex dynamics underlying this interaction. This
would have greatly assisted future decision-makers hearing speech-based challenges in
trade mark registration and beyond –notably, infringement.

141 Basic (n 4) [6].

142 Case C-240/18, Constantin Film Produktion (n 5) Opinion of AG Bobek [53]. This is one of the paragraphs
of the AG’s opinion (i.e. [47]-[57]) that the CJEU alludes to in its decision upon acknowledgement that
speech is implicated in Article 7(1)(f) EUTMR. See quotation to n [129]. It seems rather far-fetched,
however, to argue that the CJEU, by referring to several paragraphs of AG Bobek’s opinion, wished to
adopt his arguments in their entirety.
143 See discussion in n [12].

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Against this backdrop, the CJEU would be best advised to shed further light on the
interpretation of the public policy and morality exclusions, if it wishes to put an end to
the growing sense of uncertainty in the field. To facilitate this process, courts of Member
States hearing appeals to refusals of registration of signs that are liable to contravene
public policy or morality should ask the CJEU to provide further insights on the
interpretation of these exclusions by means of carefully tailored requests for preliminary
rulings. This will be particularly useful where appeals are launched by trade mark
applicants on grounds that refusals of registration contravene their Article 10 ECHR
rights. In this regard, Brexit might prove a disruptive force yet again, since: (a) most
national cases matching this profile to date have been brought before the UK AP;144 and
(b) UK judges have historically adopted a very active role in mobilising the CJEU to clarify
the interpretation of EU trade mark laws.145

***

144Scranage (n 4); French Connection (n 5); Basic (n 4); Ghazilian (n 4).

145Case C-324/09, L’Oréal v eBay (2011) ECR I-06011; Case C-323/09, Interflora Inc v Marks & Spencer plc
(2011) ECR I-08625; Case C-487/07, L’Oréal v Bellure (2009) ECR I-05185; Case C-533/06, O2 Holdings Ltd
& O2 Ltd v Hutchison 3G UK Ltd (2008) ECR I-04231.

36