Pablo Escobar trade mark described as “highly offensive” and “shocking” by the EU General Court

An EU trade mark application for the name PABLO ESCOBAR (the “Application”) has been rejected by the EU General Court on the grounds that it is contrary to public policy and accepted principles of morality.

Background

Pablo Escobar, known as "the king of cocaine", was the founder and leader of the Medellín Cartel in Colombia and is one of the most infamous drug kingpins in modern history. Although never convicted, he was allegedly the mastermind behind countless crimes including drug trafficking, murder, bombings and narco-terrorism.

The Application was filed by Escobar Inc. (“Applicant”), the official holding company of the Escobar family led by Roberto Escobar, Pablo’s older brother and former accountant and chief of assassinations of the Medellín Cartel. The Application was filed in September 2021 for various classes of goods and services and was entirely rejected by the EUIPO Examination Division and Board of Appeal on the grounds that the name PABLO ESCOBAR is contrary to public policy and accepted principles of morality under Article 7(1)(f) of EU Regulation 2017/1001.

The Applicant appealed to the EU General Court and a decision was handed down on 17 April 2024, dismissing the appeal and refusing to register the Application.

Summary of the EU General Court’s Decision

The Applicant appealed on two substantive grounds:

1. the name PABLO ESCOBAR is not contrary to public policy and accepted principles of morality; and
2. refusing to register the Application is an infringement of Pablo Escobar's fundamental right to the presumption of innocence under Article 48 of the Charter of Fundamental Rights of the EU[1].

Public policy and morality

The Applicant and the EUIPO agreed to focus on the relevant Spanish public who are most familiar with Pablo Escobar due to Spain’s historical links with Colombia. However, the Applicant argued that the EUIPO should have assessed the public policy and morality objection from the perspective of a majority of the relevant Spanish public.

The EU General Court rejected this argument, approving of the EUIPO’s approach of considering the relevant Spanish public who are reasonable and have an average sensitivity and tolerance threshold. It also held that the relevant public cannot be limited to consumers of the goods and services applied for and should include persons who “will encounter that sign incidentally in their day-to-day lives”.

Following this approach, the EU General Court upheld the EUIPO’s findings that a non-negligible part (rather than a majority) of the relevant Spanish public would associate Pablo Escobar with the drug trafficking, narco-terrorism and consequent suffering committed by the Medellín cartel, and therefore would perceive the name PABLO ESCOBAR as highly offensive or shocking. It went on to say that such crimes “were unacceptable in modern democratic societies”, “absolutely contrary to the recognised ethical and moral principles … in all EU Member States”, and “constituted one of the most serious threats to the fundamental interests of society and the maintenance of social peace and order”.

The Applicant also relied on the names of historical figures associated with crimes, such as Bonnie and Clyde, Al Capone and Che Guevara, which have been registered as EU trade marks, asserting that these “Robin Hood” type of characters no longer fall within the public policy and morality objection. The Applicant claimed that Pablo Escobar is of the same ilk as these characters and was nicknamed the “Robin Hood of Colombia” due to his many good deeds for the poor in Colombia.

The EU General Court disagreed, stating that Pablo Escobar’s criminal activity is not outweighed by his good deeds. The EU General Court confirmed that the EUIPO is not bound by its previous decisions for similar marks. In any event, some of the similar marks referenced by the Applicant had been refused registration on the public policy and morality objection. The EU General Court also agreed with the EUIPO distinguishing Pablo Escobar from the historical, iconic characters referenced whose offensive character may have diminished over time.

Presumption of innocence

The Applicant argued the EUIPO’s finding that it only mattered that the relevant public associates Pablo Escobar with crimes infringed his right to the presumption of innocence since he had never been convicted of the crimes alleged against him.

The EU General Court acknowledged Pablo Escobar's right to the presumption of innocence, but nevertheless rejected this argument. Although Pablo Escobar had never been convicted in Colombia, US or Europe of the crimes alleged against him, he had voluntarily struck a deal with the Colombian government to remain in his prison (nicknamed La Catedral). He was therefore perceived by the relevant Spanish public as "an offensive symbol of organised crime causing a great deal of suffering", which was ironically supported by the Applicant’s own evidence. Accordingly, the EUIPO was entitled to make this finding without infringing Pablo Escobar’s right to the presumption of innocence.

Commentary

What is interesting is that the EUIPO has previously registered real and fictional names associated with famous criminal organisations such as THE GODFATHER, EL CHAPO, MAFIA and YAKUZA. The rejection of PABLO ESCOBAR is the latest in a trend which demonstrates the EUIPO is applying the public policy and morality objection more strictly against marks associated with famous criminal organisations. Indeed, the EUIPO has drawn a definitive line on this by including in its Guidelines a case (2018, T-1/17) brought by the Italian Republic which successfully invalidated the LA MAFIA mark depicted below based on the public policy and morality objection. This case was relied on throughout the EUIPO and EU General Court’s decisions for the Application.

This strict approach has implications for businesses in the TV, film and gaming industries who create content in the crime genre. These businesses will have to tread more carefully and think creatively about branding, balancing the use of generic language with distinctive, famous names.

It will be interesting to see how strictly trade mark registries outside of Europe will apply their equivalent of the public policy and morality objection, and if they find names associated with famous criminal organisations to be offensive to their general public.

As a final remark, Che Guevara died in 1967 whereas Pablo Escobar died in 1993. It may be that the passage of time will mean an application in the future, at a point when Escobar's offensive character has “diminished”, might succeed.