The General Court of the EU recently considered whether the name Pablo Escobar can be registered as an EU trademark on the grounds of public order and/or morality, as Miriam den Boogert explains.
The holding company that manages, among other things, the IP rights of the Escobar family, Escobar Inc, submitted an application for registration of the name 'Pablo Escobar' as an EU trademark (EUTM) in 2021. The application covered a wide variety of goods and services, including 'cosmetics, software, helicopters, firearms, furniture, cake tins, clothing, tobacco and tobacco replacement products to medical, financial, catering and legal services'.
The European IP Office (EUIPO) refused the application (in the first instance and on appeal) based on Article 7(1)(f) of the EU Trademark Regulation (EUTMR). This article stipulates that registration will be refused if the sign is contrary to public order or morality.
CP14 and the assessment of trademark ethics
EUIPO and the national IP offices of the different EU member states recently considered the general principles for assessing whether a trademark is contrary to public order or morality. These principles were subsequently captured by the Common Practice guidelines 'CP14', released in April 2024, to provide further guidance when assessing whether a sign is contrary to public order and/or morality and, therefore, barred from trademark registration.
Among other things, CP14 states:
- Each application for trademark registration must be assessed separately, considering the normal level of sensitivity and tolerance of the relevant public in the jurisdiction concerned and any circumstances specific to the member state(s) and the particular case.
- Freedom of expression must also be considered when assessing applications on the grounds of trademark ethics.
CP14 defines the concepts of public order and morality as:
- Public policy: a set of fundamental norms, principles and values of societies in the EU at a given point in time, including the universal values of the EU, such as human dignity, freedom, equality and solidarity, and the principles of democracy and the rule of law, as proclaimed in the Charter of Fundamental Rights of the European Union (CFREU). Its content should be ascertainable from reliable and objective sources.
- Accepted principles of morality: the fundamental moral values and standards accepted by a society in the EU at a given time, including religious, cultural, and social moral standards and values. The identification of such values and standards requires at least some empirical assessment of what the relevant society (the public in question) considers, at a given point in time, to be acceptable norms of conduct.
In addition, CP14 notes that when it comes to reviewing applications based on trademark ethics, there is a distinction to be made between conflict with 'public order' and 'good taste'. That line is very thin, but if a sign applied for as a trademark shows bad taste because it is coarse, unrefined or indecent, that is no reason to refuse the application for registration on the grounds of Article 7(1)(f) EUTMR.
On the other hand, certain categories of signs were identified as potentially falling within the scope of Article 7(1)(f) EUTMR, including signs that refer to or are related to: (1) illegal substances, (2) risks to public safety, (3) a religious or sacred bond, (4) vulgarities (swear words, insulting gestures, etc), (5) obscenity, sexuality and innuendo, (6) signs that disparage or denigrate a particular group, (7) criminal activities and crimes against humanity, (8) known tragic events and (9) historical figures, national/EU symbols and/or esteemed personalities, etc.
Trademark ethics: Can the name Pablo Escobar be registered?
As it is a sign related to a criminal organization, illegal activities and/or serious crime, the trademark application for 'Pablo Escobar' is considered to fall under category 7 of the above list.
While Pablo Escobar is Colombian and never convicted, he is well-known around the world as a drug lord and narco-terrorist. As such, the fundamental moral values of the EU and its member states prevent the registration of such a sign as a trademark (as well as its commercial use), given the registration of these marks would deeply offend and shock the victims and their relatives, and anyone who shares these values. In addition, the registration could be viewed as an apology for crime and a trivialisation of the harm caused.
In its ruling, the General Court of the EU agreed with EUIPO's rulings that the sign 'Pablo Escobar' must be assessed on the basis not only on EU public policy and morality, but also those of Spain given the historical ties between Spain and Colombia. As the application was considered contrary to the fundamental values and moral norms of Spanish society, it was therefore contrary to public order and morality. In this case, the principle of the presumption of innocence (as Escobar was not criminally convicted) was not considered a barrier to the judgement nor the refusal to register 'Pablo Escobar' as a trademark in the EU.
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