In its decision of 17 April 2024*, the EU General Court has confirmed that the trade mark “Pablo Escobar” must be refused registration on the ground that it is contrary to public policy or to accepted principles of morality.
In 2021, US company Escobar Inc. applied to register “Pablo Escobar” as an EU trade mark. The examiner at the EU Intellectual Property Office (EUIPO) refused registration of this trade mark on the ground that it is “contrary to public policy and accepted principles of morality” under the EU Trade Mark Regulation. The applicant filed an appeal at the EUIPO’s Board of Appeal (BoA), who upheld the refusal.
A further appeal was filed at the EU General Court, on three grounds: that the BoA misinterpreted or misapplied the law on refusals based on public policy and morality, that no proper reasons were provided and that the fundamental right to the presumption of innocence was not taken into account.
In particular, the applicant argued that the BoA failed to examine whether a majority of the Spanish public (the public of reference in the appealed decision), would perceive the trade mark as being immoral. However, the General Court rejected this argument and clarified that a refusal on the ground at hand cannot be based either on the perception of the majority of the relevant public or on those sections of the public with extremely high or low levels of sensitivity and tolerance; rather, the decision should be based on the perception of a person with average sensitivity and tolerance thresholds.
The Court also gave short shrift to the applicant’s arguments based on Pablo Escobar’s alleged good deeds and status of icon in popular culture, responding that these do not offset the suffering caused by the Medellín cartel, of which Escobar was the known founder.
As for the argument based on the presumption of innocence, the Court stressed the importance of this principle, but held that the BoA’s decision did not derogate from this, noting Pablo Escobar himself made a deal with the Colombian government to join his “prison” (La Catedral), but nevertheless what matters is that he is perceived by the relevant public as a symbol of organised crime and narco-terrorism.
The Court therefore found that the appealed decision correctly applied the law and was properly reasoned. The Court’s decision did not depart from previous case law, but provided further clarity and guidance on a ground of refusal which is not often raised by IP offices, and particularly on the relevant point of view to be considered in assessing whether a trade mark is contrary to the accepted principles of morality.
If you would like to know whether your trade mark can be registered or not, or if your application was refused, WP Thompson will be able to advise and assist you. Please contact one of our trade mark experts, who will be delighted to help.
*EU General Court - Case T‑255/23 - Escobar Inc. v EUIPO, 17 April 2024