Pablo Escobar: Too infamous for a trademark

The EU Intellectual Property Office applied textbook procedure when rejecting a registration bid for the drug lord's name, says Shannon Fahy of Browne Jacobson. 

Pablo Escobar is undoubtedly a household name; but is the name well-known for representing an icon of pop culture or because it is the symbol of a drug lord narco-terrorist? The EU General Court considered this very question when Escobar Inc (the “Applicant”) sought to annul the EUIPO’s decision that it could not register an EU trademark for ‘Pablo Escobar’. 

Originally, the Applicant sought to register the name in a ream of classes, but its application was rejected in its entirety by the EUIPO based on Article 7(1)(f) of Regulation (EU) 2017/1001 (the “EUTMR”). Article 7(1)(f) provides that trademarks which are contrary to public policy or to accepted principles of morality cannot be registered.

The Applicant appealed the decision to the EUIPO’s Fifth Board of Appeal (the “Board”), but the appeal was dismissed on the same basis.

In February 2023, the Applicant brought its claim against the EUIPO to the EU General Court. It put forth three grounds as to why the EUIPO’s decision should be annulled, while the EUIPO disputed each. On April 17, 2024, the EU General Court handed down its ultimate decision.

Ground No. 1: Infringement by the Board of Article 7(1)(f)

The Applicant claimed that the Board had misinterpreted and misapplied Article 7(1)(j). It argued that the Board should have considered the perception of the relevant public in the EU or a substantial part of it (which could include a single Member State) but that reference must be made to the perception of the ‘majority’ of that public ‘at the time’ when the examination was carried out. The Applicant criticised the Board for having applied Article 7(1)(f) too liberally.

However, the General Court agreed with the Board’s position that the ‘relevant public’ could not be limited solely to the public directly addressed by the goods and services intended to be covered by the mark. Instead, consideration had to be given to whether the mark would shock other persons who encounter the sign incidentally in their day-to-day lives, as opposed to where they have an interest in the goods and / or services for which the sign relates.

The Board found that ‘at least a non-negligible part of the relevant Spanish public would associate the mark applied for with Pablo Escobar, perceived as a symbol of a drug lord and a narco-terrorist’, and that, if registered, the mark would end up being associated with the crimes committed by the Medellín cartel or Pablo Escobar—the actions of both being unacceptable in modern democratic societies.

The Board was firm in its finding that the general public exposed to the mark would consider it contradictory to ‘the indivisible and universal values on which the European Union is founded.’

To allow the registration would trivialise the suffering of those who had been killed or injured by the cartel, which was presumably led by Pablo Escobar.

The General Court found that the Board had not misinterpreted or misapplied Article 7(1)(f). In fact, it identified that the correct assessment is not based on the perception of the majority of the relevant pubic, but rather the assessment must be based on the standard of a reasonable person with average sensitivity and tolerance thresholds. The General Court found that the Board had carried out the correct assessment in relation to the Spanish public.

Ground No. 2:  Infringement by the Board of Article 94(1)

Under Article 94(1) of the EUTMR, the EUIPO has an obligation to state the reasons for its decisions. The Applicant alleged that the Board had failed to ‘sufficiently specify’ the reasons why the name Pablo Escobar could not be registered and that the Board also failed to take into account previous decisions in respect of similar applications that had already been before the EUIPO (namely, ‘Robin Hood’, ‘Bonnie and Clyde’, ‘Al Capone’, and ‘Che Guevara’).

The General Court held that the EUIPO is not obliged to express a view on every argument that is submitted to it. It was found that the Board had set out in a ‘clear and unequivocal manner, the reasoning’ as to why the mark could not be registered.

The Board had met the requisite legal standard when it gave reasons why the current application was treated differently to previous registrations. It was accepted that the application was not comparable to the earlier applications and that the Board’s decision had made it possible to understand why that was the case; that being, that the previously mentioned names had more to do with history than current events, and their offensive character may have diminished over time.

Plea No. 3: Infringement of the fundamental right to the presumption of innocence

The Applicant claimed that Pablo Escobar’s fundamental right to the presumption of innocence had been infringed by the Board when it treated the criminal activity of Pablo Escobar as known facts despite him never having been convicted.

The Board had found that while there had never been a criminal conviction, Pablo Escobar was nevertheless perceived by the relevant Spanish public, as the leader of a criminal organisation and an offensive symbol of organised crime that had brought about a great deal of suffering.

The General Court found that the Board was entitled to find that the conditions under Article 7(1)(f) had been satisfied, without it calling into question Pablo Escobar’s fundamental right to the presumption of innocence.

Conclusion

The General Court dismissed the entirety of the case on the basis that the Applicant’s pleas were unfounded. As a result, ‘Pablo Escobar’ will not be registered as an EU trademark any time soon. 

However, that is not to say that that will always be the case. Public policy and accepted principles of morality evolve as society progresses (or regresses for that matter). Furthermore, offensiveness may diminish over time.

However, in the meantime, this case primarily operates as a reminder of how Article 7(1)(f) should properly be assessed.

Shannon Fahy is an IP associate at Browne Jacobson.