The EU General Court has upheld a decision to reject an EU trade mark application for PABLO ESCOBAR on the ground that it was contrary to public policy and to accepted principles of morality (Case T-255/23).
The application was filed by Escobar Inc in September 2021 for a wide range of goods and services in classes 3, 5, 9, 10, 12 to 16, 18, 20, 21, 24 to 26 and 28 to 45. It was rejected under Article 7(1)(f) of the EUTM Regulation.
The Board of Appeal upheld that decision in February 2023. In its decision, the Board took account of how the sign would be perceived by the Spanish public.
Three arguments in favour of granting the EUTM
Escobar Inc appealed the decision on three grounds.
First, it argued that the Board had applied Article 7(1)(f) too liberally by not examining whether a majority of the Spanish public would perceive the sign as immoral. It also said that the Board had not taken account of the fact that Bonnie and Clyde, Al Capone and Che Guevara have already been registered as EUTMs and that Escobar was known as the Robin Hood of Colombia.
But the Court said the Board correctly referred to the perception of persons who “within the relevant Spanish public taken into account, could be regarded as reasonable and having average sensitivity and tolerance thresholds and who, as such, shared the indivisible and universal values on which the European Union is founded”.
These persons “would associate the name of Pablo Escobar with drug trafficking and narco-terrorism and with the crimes and suffering resulting therefrom, rather than with his possible good deeds in favour of the poor in Colombia”. They would therefore perceive a trade mark for Pablo Escobar as running counter to the fundamental values and moral standards prevailing in Spanish society.
Second, Escobar Inc. said the Board had not specified the reasons why Pablo Escobar could not be registered given that other applications corresponding to alleged criminals had been. But the Court said:
“the contested decision makes it possible to understand, in a sufficiently clear and unequivocal manner, that, for the Board of Appeal, the application for registration of the name of Pablo Escobar as an EU trade mark was not comparable to the earlier applications for registration relied on by the applicant, which related to names of alleged criminals, which have become iconic, which had more to do with history than current events and whose offensive character may have diminished over time.”
Moreover, the Board had made it clear that examples of Escobar’s popularity in Spain did not call into question the finding that the name would be perceived as an offensive symbol of organised crime.
Third, the applicant said the Board had not taken account of the fundamental right to the presumption of innocence in Article 48 of the Charter. But the Court disagreed, saying:
“The Board of Appeal found … in essence, that, even though ‘Pablo Escobar [had] never [been] convicted by a Colombian, an American or a European court but [had] voluntarily [agreed] to join his “prison”, La Catedral, as part of a deal with the then Colombian government’, he was nevertheless perceived, by the persons referred to … above, as an offensive symbol of organised crime causing a great deal of suffering.”
Those assessments were well founded in light of the evidence.
What does this mean?
Trade mark applications refused on the basis that they are contrary to public policy or accepted principles of morality are relatively rare. But they always make interesting reading.
This case suggests that applications comprising the name of a figure whose notoriety is relatively fresh in the memory (Escobar was killed in 1993) are likely to be refused. The acceptance of marks comprising the names of criminals in the past, though, perhaps indicates that the passage of time makes the public more forgiving.
Perhaps Escobar Inc. were just a bit premature with this EUTM application.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com