http://ipkitten.blogspot.com/2024/05/pablo-escobar-contrary-to-public-policy.html
There is no clear line between trade marks that are merely in poor taste (which is not a ground for refusal) and trade marks that are contrary to public policy or accepted principles of morality (prohibited from registration by virtue of Art. 7(1)(f) EUTMR). The EU Intellectual Property Network recently published the CP14 Common Practice concerning this distinction. It has been developed by the European Union Intellectual Property Office (‘EUIPO’) in collaboration with the trade mark offices of the EU Member States and user associations. These guidelines provide the common understanding of the concepts of public policy and accepted principles of morality as well as criteria for their assessment and illustrative examples.
A decision that is worth including in this document is the recent General Court judgment on the refusal of the trade mark ‘Pablo Escobar’.
Background
On 30 September 2021, Escobar Inc. (‘Escobar’), the company managing the assets of Pablo Escobar’s family, filed an application for the EU word mark ‘Pablo Escobar’ covering various goods and services in classes 3, 5, 9, 10, 12 to 16, 18, 20, 21, 24 to 26 and 28 to 45. The EUIPO rejected the application because it considered the trade mark to be contrary to public policy and accepted principles of morality (Art. 7(1)(f) EUTMR). Agreeing with the EUIPO, the Board of Appeal of the EUIPO (‘BoA’) dismissed Escobar’s appeal. Escobar filed an action before the General Court against the BoA’s decision.
The General Court’s decision
The General Court dismissed the appeal (case T-255/23).
Escobar argued inter alia that the BoA had infringed Art. 7(1)(f) EUTMR and the right to the presumption of innocence (Art. 48(1) of the Charter of Fundamental Rights of the European Union (‘CFR’)).
Art. 7(1)(f) EUTMR
The General Court held that the relevant public is not limited to consumers of the goods and services in question but consists of all people that may get into contact with them in their day-to-day lives.
Further, particular circumstances in certain Member States, which are likely to influence the public’s perception, can be taken into account. The Court found that Spain and Colombia have (historical) links and the Spanish public is most familiar with the Colombian national Pablo Escobar. Therefore, the judges confirmed that the BoA was entitled to limit its assessment to Spain.
The Spanish public knows Pablo Escobar (1949 to 1993). The General Court found that he was presumed to have been a drug lord and narco-terrorist who founded and was the sole leader of the Medellín cartel in Colombia. On that basis, the Court held the following:
The mark applied for contradicts, for a non-negligible part of the general public exposed to it, the indivisible and universal values on which the European Union is founded, namely human dignity, freedom, equality and solidarity, and the principles of democracy and the rule of law, as proclaimed in the [CFR], and the right to life and physical integrity. Furthermore, for the many consumers of the goods and services at issue who, in particular in Spain, share those values, the mark applied for could be perceived as being highly offensive or shocking, as an apology of crime and a trivialisation of the suffering caused to thousands of people killed or injured by the Medellín cartel, of which Pablo Escobar was the presumed leader. That suffering is not erased by the actions in favour of the poor or the role of ‘Robin Hood’ which the applicant or many Colombians attribute to Pablo Escobar in Colombia, or by the fact that he has become an icon of popular culture in Spain.
Escobar’s argument that the majority of people do not consider the sign to be immoral was rejected. The Court found that the assessment of Art. 7(1)(f) EUTMR cannot be based either on the perception of the majority or on the part of the public that does not find anything shocking. Instead, it must be based on the standard of a reasonable person with average sensitivity and tolerance thresholds.
The fact that ‘Bonnie and Clyde’, ‘Al Capone’ or ‘Che Guevara’ had been registered as EU trade marks was deemed irrelevant because neither the EUIPO nor the Court are bound by earlier decisions on the registration of other signs.
Escobar had submitted examples of wall decorations, figurines, t-shirts and books representing Pablo Escobar in ways which could be considered as sympathetic or amusing. Although the examples showed the popularity of Pablo Escobar in Spain, the Court found that they did not call into question that the public would perceive ‘Pablo Escobar’ as an offensive symbol of organised crime causing a great deal of suffering.
Art. 48(1) CFR
The applicant argued that Pablo Escobar had never been criminally convicted and enjoyed, on that basis, the presumption of innocence. This did not convince the Court. In view of the image created by literature and films, a non-negligible part of the Spanish public nevertheless perceives Pablo Escobar as the leader of a criminal organisation responsible for numerous crimes.
Comment
The interesting bit about the decision is that the General Court only presumed the criminal allegations against Pablo Escobar to be true. It is usually not sufficient to base findings on probabilities and suppositions. Rather, solid and objective evidence is necessary. However, it is obvious that the EU instances cannot be required to hold a trial in trade mark matters against (deceased) people in order to find out whether they are innocent or not.
Therefore, the overriding principle is the public’s perception. It is sufficient that a (non-negligible) part of the public believes that Pablo Escobar committed the crimes he was accused of, even if this belief is based on his image created by literature or films.
This is in line with previous case law. The public’s perception is decisive even if it based, e.g., on inaccurate definitions from a scientific or technical point of view (case T-683/18 at para. 21).
An interesting question is what impact this decision might have on the registerability of fictional criminals such as Tony Montana from Scarface, Walter White from Breaking Bad and Don Corleone from The Godfather? Their names are all registered as EU trade marks and these characters undoubtedly – and not just presumably – committed serious, albeit fictional, crimes. Do these characters – and as a consequence the protection of their names as trade marks – not also contradict “the indivisible and universal values on which the European Union is founded”? Or are they excused because they and their crimes are purely fictional?
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