No EU trademark ‘Pablo Escobar’
Is Pablo Escobar a drug terrorist and a symbol of organised crime that has caused much suffering - or is Pablo Escobar perceived as the "Robin Hood of Colombia", a perception that is supported not least by the Netflix series "Narcos"?
These were the questions at the heart of the hearing on the refused trademark registration of the term Pablo Escobar, which was decided by the European Court (CFI) yesterday, 17 April 2024. The term Pablo Escobar cannot be registered as an EU trademark, the court ruled, as this term constitutes an offence against public policy or morality (absolute ground for refusal under Article 7(1)(f) of Regulation No 2017/1001)
Pablo Escobar
Pablo Escobar has become a mythical figure in mainstream popular culture due to his many good deeds for the poor in Colombia, argued the applicant, the Escobar Inc. (Puerto Rico), who applied in vain for an EU trademark for the word sign Pablo Escobar at the EUIPO on 30 September 2021, for a variety of goods and services.
As evidence of the positive perception as a mythical figure, the applicant referred to the entry about Pablo Escobar in the online encyclopaedia Wikipedia, as well as to the series "Narcos" on Netflix, which is broadcast worldwide, including in Spain, and to the fact that Pablo Escobar was nicknamed "Robin Hood of Colombia" during his lifetime.
It is also fact that Pablo Escobar, born in 1949, was known as a drug terrorist and is associated with crimes committed by the Medellín cartel or crimes directly attributed to Pablo Escobar.
The trademark application was rejected by the EUIPO. Registering the term Pablo Escobar as a trademark would be contrary to public policy or morality.
However, this must relate to the public perception at the time of the trademark application.
It therefore had to be clarified before the CFI: had the Board of Appeal of the EUIPO rightly found that the term Pablo Escobar was still contrary to public policy or accepted principles of morality in 2021?
Offence against public policy or morality
First of all, it is necessary to look at who the relevant public is, i.e. the public in the European Union that would take offence at the term "Pablo Escobar".
In its decision, the Board of Appeal of the EUIPO rightly referred to the Spanish-speaking public because they are most likely to be familiar with the Colombian national named Pablo Escobar.
According to case law, it must be taken into account that the sign covered by this ground for refusal not only disturbs the public to whom the goods and services designated by the sign are addressed, but also other persons who, without being affected by these goods and services, come into contact with the sign by chance in everyday life (cf. Judgment of 15 March 2018, La Mafia Franchises v EUIPO - Italy [La Mafia SE SIENTA A LA MESA], T-1/17, EU:T:2018:146, para. 27 and the case law cited therein).
The Court added that, for the application of this ground for refusal, account must be taken not only of the circumstances common to all Member States of the European Union, but also of the particular circumstances of each Member State, which may influence the perception of the relevant public in those States.
Pablo Escobar cannot be registered as an EU trademark
In the contested decision, the Board of Appeal found that at least a non-negligible part of the relevant Spanish public would associate the trademark applied for with Pablo Escobar, who is perceived as a symbol of a drug lord and a narco-terrorist, and explained this.
According to the Board of Appeal, the trademark applied for, Pablo Escobar, could be perceived by many consumers of the goods and services in question, particularly in Spain, as highly offensive or shocking, as an excuse for the crime and as trivialising the suffering suffered by thousands of people who were killed or injured by the Medellín cartel, of which Pablo Escobar was the alleged leader.
This suffering is not erased by the actions in favour of the poor, nor by the role of 'Robin Hood' attributed to Pablo Escobar in Colombia by the plaintiff or by many Colombians, nor by the fact that he has become an icon of popular culture in Spain.
Pablo Escobar is directly associated with crimes that are unacceptable in modern democratic societies, as they are absolutely contrary to the recognised ethical and moral principles not only in Spain but in all EU Member States and constitute one of the most serious threats to the fundamental interests of society and the maintenance of social peace and order.
The CFI endorsed this view.
The fact that the names Bonnie and Clyde, Al Capone or Che Guevara have already been registered as EU trade marks and have subsequently either expired or been cancelled is, according to the CFI, not such as to call into question the assessments of the Board of Appeal. The Board of Appeal had correctly taken into account the specific perception of the name Pablo Escobar by the relevant public.
The applicant complained in vain that the Board of Appeal had not examined in the contested decision whether the majority of the public would perceive the trademark applied for as immoral. The CFI rejected this.
According to the case-law, the assessment of the existence of a ground for refusal under Article 7(1)(f) of Regulation 2017/1001 cannot be based on the perception of the majority of the relevant public or on that of the sections of that public that do not find anything shocking or are easily offended.
Reasonable people with average sensitivity and tolerance thresholds are always the measure of offence. It was precisely this group of people that the Board of Appeal had focussed on in its decision.
The claim was therefore dismissed in its entirety: Pablo Escobar cannot be registered as an EU trademark (EuG, 17.04.204, T‑255/23).
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