Intellectual Property
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Intellectual Property
Intellectual
Property
Patents | Trade Marks | Designs
Date: 6 May 2024
In its judgement of 17.04.2024 (case reference: T-255/23), the General Court of the European Union (EGC) ruled that the name ‘Pablo Escobar’ cannot be registered as a trade mark in the EU. The Office argues that the name ‘Pablo Escobar’ is contrary to public morale, because it is associated with drug trafficking and narco-terrorism.
Pablo Escobar (1949 - 1993) was a Colombian citizen who is considered the founder and leader of the Medellin drug cartel. In addition to drug trafficking, Pablo Escobar was also known for his charitable activities in his home country, earning him the nickname ‘Robin Hood of Colombia’. Escobar became known to a wider public through the Netflix hit series ‘Narcos’. Escobar commissioned hundreds of murders, such as the attack on Avianca flight 203.
On 30 September 2021, Escobar Inc., based in Puerto Rico (USA), filed an application with the European Union Intellectual Property Office (EUIPO) to register the word mark ‘Pablo Escobar’ as a European Union trade mark for a wide range of goods and services. The application was based on the Nice classes 3, 5, 9, 10, 12-16, 18, 20, 21, 24-26 and 28-45.
The EUIPO rejected the application for registration on the grounds that the trade mark ‘Pablo Escobar’ was contrary to public policy and morality (decision of 21 February 2023; file number: R 1364/2022-5). The Office argued that the Spanish public associates the name ‘Pablo Escobar’ with illegal drug smuggling and trafficking. The EUIPO targeted the Spanish public because there is a close cultural, historical and general connection between Colombia and Spain and the Spanish public is familiar with the name Escobar. The EUIPO based its decision on Article 7(1)(f) of the EU Trade Mark Regulation (EUTMR), which stipulates that trade marks contrary to public policy or morality shall not be registered. This means that a sign is excluded from registration if it is understood by the relevant public to be incompatible with the fundamental moral values and standards of society. On the presumption of innocence, the Office emphasised that the fact that Pablo Escobar was never convicted by a court does not mean that the general public would not perceive the mark applied for as a reference to a criminal and drug trafficker.
Escobar Inc. has now appealed against this decision of the EUIPO to the General Court.
The General Court dismissed the appeal and confirmed the refusal to register the trade mark ‘Pablo Escobar’. According to the General Court (EGC), the EUIPO could base its judgement on the perception of average Spaniards with average sensitivity and tolerance who share the general values on which the European Union is founded (human dignity, freedom, equality, solidarity and the principles of democracy, the rule of law and freedom of expression). The EUIPO correctly assumed that these above-mentioned persons would associate the name ‘Pablo Escobar’ with drug trafficking and narco-terrorism and crime and suffering. Any charitable activities would fade into the background. Therefore, the trade mark is immoral in the perception of a reasonable person with average sensitivity and tolerance threshold, who shares the universal values of the EU. The EGC added that Pablo Escobar's right to the presumption of innocence (Art. 48 CFR) was not violated, as the Spanish public perceived him as a symbol of organised crime and numerous crimes, although he was never finally convicted by a court.
The judgement of the General Court can still be appealed before the European Court of Justice (ECJ).
The ruling is one of a series of very diverse decisions on trade marks relating to organised crime and terrorism. For example, trade marks containing the terms ‘ETA’, ‘Bonnie & Clyde’, ‘Al Capone’ and ‘Che Guevara’ were registered, while a word/figurative mark ‘Pablo Escobar- Plate o Plomo Medellìn’ [sic] was rejected by the EUIPO for the same reason. For the term ‘Mafia’ both registrations and rejections exist. This complex ruling is not limited to the registering of a trade mark, but can also be used to have a third party's trade mark cancelled or to defend against an infringement action.
We have a dedicated team of trade mark attorneys who can answer any questions on trade mark law.
https://eur-lex.europa.eu/legal-content/DE/TXT/HTML/?uri=CELEX:32017R1001
https://curia.europa.eu/jcms/upload/docs/application/pdf/2024-04/cp240067en.pdf
https://en.wikipedia.org/wiki/Pablo_Escobar
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