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The Escobar family saga seems to have reached its final chapter. This time we are not referring to the well-known Netflix series based on the life of the Colombian drug lord, but rather to the dispute involving (as both protagonists and antagonists) the EU trademark PABLO ESCOBAR and the European courts.
To better understand the facts, we need to go back to September 30, 2021, the date on which the representatives of Escobar Inc., a Colombian company that manages and holds the intellectual property rights relating to Pablo Escobar, filed a trademark application with the European Intellectual Property Office (EUIPO) to obtain registration of the name PABLO ESCOBAR for a large number of goods and services. The trademark would have been used to distinguish cosmetics, perfumes, pharmaceuticals, but also clothing, sunglasses, musical instruments and even coffee and catering services. Could some typical “tools of trade” such as helicopters, firearms, tobacco and alcoholic beverages be missing?
The EUIPO examiners rejected the application in its entirety on the basis of Art. 7(1)(f) of the European Union Trademark Regulation, which refuses registration of signs contrary to public policy or accepted principles of morality.
In response, Escobar Inc. decided to appeal the decision.
The applicant argued that, in the absence of a clear and universal definition of the concepts of “public policy” and “morality” in the above-mentioned Art. 7(1)(f), it follows from case law that the examination of whether a sign is contrary to those principles must be carried out in relation to the perception of the relevant public of the Union or of a substantial part of it – or even only of one Member State. An infringement of these principles would only exist if the mark was perceived as incompatible with the fundamental moral values of the members of that territory. The European office, it claimed, had applied Article 7(1)(f) of the Regulation too strictly by not examining whether the majority of the public would perceive the trade mark applied for as immoral.
The Colombian family’s lawyers applied a rather creative reasoning, according to which even the names of famous characters such as Robin Hood, Bonnie and Clyde, Al Capone or Che Guevara, which have become mythical, symbolic or archetypal in traditional popular culture despite being responsible for numerous offences, had been registered as EU trade marks. There was no reason, they said, why the name – already registered in the USA – of a man like PABLO ESCOBAR could not also be registered, given that his numerous actions on behalf of the poor in Colombia, including the funding of schools and hospitals, have made him a good leader figure in traditional popular culture, earning him the nickname “the Robin Hood of Colombia”.
Shrewd as they were, the arguments put forward did not convince the EUIPO’s Fifth Board of Appeal, which upheld the decision to refuse the mark PABLO ESCOBAR by citing well-known precedents (above all 15/03/2018, -T 1/17, La Mafia SE SIENTA A LA MESA (fig.) and 29/09/2004, R 176/2004-2, BIN LADIN).
Surrender, however, does not seem to be in the Escobar family’s vocabulary. Not satisfied with the decisions to reject the PABLO ESCOBAR trademark issued by the European Office, they decided to take the matter to a higher authority: the General Court of the EU.
Even this effort, however, proved to be in vain; in fact, in its recent judgment of April 17, 2024 (Case T-255/23, see at https://curia.europa.eu/juris/document/document.jsf?text=&docid=284821&pageIndex=0&doclang=en&mode=lst&dir=&occ=first&part=1&cid=1268356), the General Court confirmed the refusal to register the above-mentioned trademark, upholding the EUIPO’s previous reasoning.
In essence, according to the judges, the relevant European consumer, who is reasonable and endowed with average thresholds of sensitivity and tolerance – and the Spanish consumer in particular, taken as an example because of the close relations between Spain and Colombia – would have associated the name PABLO ESCOBAR not so much with the (alleged) good deeds of the leader of the Medellin cartel, as with his criminal conduct contrary to the values of liberty, equality, solidarity, respect for human dignity, and the right to life and physical integrity on which the Union is founded.
Although Pablo Escobar had never been convicted by a Colombian, American or European court, but had voluntarily agreed to be secluded in his own prison (“La Catedral”) as part of an agreement with the Colombian government at the time, his name was perceived by the general public as an offensive symbol of organised crime, which had caused a lot of suffering to many people.
It is interesting to note that this decision comes almost at the same time as the adoption of new guidelines (Common Practice 14, or CP14, see it at https://www.euipo.europa.eu/it/news/publication-and-implementation-of-cp14) that provide a common and harmonised interpretation of the concepts of public policy and morality and serve as a reference for the EUIPO and all Member States’ intellectual property offices.
CP 14 is concerned not only with defining these concepts and their relationship to freedom of expression, but also with clarifying the differences between them, the criteria and reference dates for their evaluation, and providing some practical examples.
Certain types of signs that could be subject to the prohibition of registration under Art. 7(1)(f) of the EU Regulation are identified, i.e. those containing/concerning 1) illicit substances; 2) public safety risks; 3) a religious or sacred nexus; 4) vulgar elements (swear words, offensive gestures, etc.); 5) obscenity, sexuality and innuendo; 6) signs disparaging or slurring a particular group; 7) criminal activities, crimes against humanity, racist and totalitarian and extremist regimes, organisations and movements; 8) well-known tragic events; 9) historical figures, national/EU symbols and/or personalities held in high esteem when associated, for example, with products and services that could debase their name (such as NELSON MANDELA for toilet paper).
Both the concepts of “public policy” and “morality” should be examined taking into account factors such as the assessment of the sign itself (e.g. the analysis of its possible meanings, spelling mistakes or unusual changes in syntax, additional verbal and/or figurative elements that could influence its meaning, etc.), the relationship between the goods and services and the relevant sign/public, the determination of reliable and objective sources from which public policy can be ascertained, and the identification of the fundamental values and moral standards applicable to morality.
Surely there will be other cases and we will see how EUIPO and the Courts will decide on other “immoral” marks.
Coming to practical cases, according to the Oxford dictionary, the verbal element “PUSSY” could refer to a child’s word for “cat”…or a slang word to refer to the female sexual organs. The combination of this verbal element with the figurative element of a cat’s paw print
would neutralise the vulgar and offensive meaning of the sign. On the contrary, the combination of the same verbal element with the depiction of a woman’s lips
would seem to refer to the sexual connotation of the term “pussy”, reinforcing its scurrilous meaning.
This teaches us, once again, how powerful symbols and language are and how we must always pay attention…to nuances.