Signs contrary to public policy or accepted principles of morality cannot be registered as trademarks. This prohibition aims to preserve ethical values accepted by societies. However, these values are variable, depending on social and cultural contexts, making the registrability of signs subjective.
On April 17, 2024, the General Court of the European Union rejected the application for the registration of the trademark "Pablo Escobar," confirming the decision of the European Union Intellectual Property Office (EUIPO), which deemed the sign contrary to public policy and accepted principles of morality.
The dispute becomes especially relevant when considering the recent publication by the EUIPO of the document 'Common Practice CP14,' a significant resource that offers general principles on the assessment of signs contrary to public policy or to accepted principles of morality, aiming to provide a common understanding on the concepts of public policy and accepted principles of morality.
On September 30, 2021, Escobar Inc. applied for an EU trademark registration with the EUIPO, for a wide range of products and services in different classes for the nominative sign 'Pablo Escobar.' On June 1, 2022, the examiner rejected the application based on Article 7(1)(f) of Regulation (EU) 2017/1001 of the European Parliament and the Council, which prohibits the registration of signs contrary to public policy and accepted principles of morality.
The Applicant appealed the decision on July 26, 2022. The Fifth Board of Appeal of the EUIPO upheld the examiner's understanding, arguing that the sign would be associated with the person of Pablo Escobar and illicit drug trafficking by a significant part of the relevant Spanish public.
The Applicant appealed to the General Court of the European Union, seeking to annul the decision. The Applicant argued that the Board of Appeal misinterpreted the relevant public and that Pablo Escobar, not having been convicted, should benefit from the presumption of innocence. Furthermore, the Applicant argued that other historical figures associated with crime, such as Bonnie and Clyde, Al Capone, and Che Guevara, had been registered as trademarks and highlighted Escobar's reputation as the 'Robin Hood of Colombia,' a reference to his perceived role as a benefactor to the poor, due to community projects he financed.
The General Court of the European Union confirmed the Board of Appeal's decision, considering it correct to base it on the perception of the relevant Spanish public. It argued that the sign "Pablo Escobar" refers to a man of Hispanic origin and that due to historical ties, the Spanish public would have a more profound knowledge of Pablo Escobar.
Regarding the argument that Pablo Escobar was never convicted of any alleged crimes and thus should benefit from the presumption of innocence, the Court reiterated the Board of Appeal's understanding that, although never convicted by a Colombian, American, or European court, Escobar voluntarily agreed to surrender to justice in exchange for not being extradited to the United States. This fact would reinforce the understanding that his name could be perceived by the relevant public, formed by the reasonable Spanish consumer with average sensitivity and tolerance threshold, as a highly offensive or shocking sign, as an apology for crime and a trivialization of the suffering caused to thousands of people killed or injured by the Medellín cartel, of which Pablo Escobar was the supposed leader. This suffering is not erased by actions in favor of people experiencing poverty or by the "Robin Hood" role that the Applicant or many Colombians attribute to Pablo Escobar in Colombia or by the fact that he has become a pop culture icon in Spain.
The Court highlighted that organized crime seriously threatens security in the EU, and associating Escobar's name with a commercial trademark would affront the moral standards of Spanish society. It also refuted the comparison with figures like Bonnie and Clyde, Al Capone, or Che Guevara, arguing that Pablo Escobar had not undergone a 'historical distancing process', a term used to describe the process by which a historical figure's negative aspects are gradually forgotten or forgiven, that could soften the negative perception.
Due to the lack of clarity in defining the terms "public policy" and "accepted principles of morality" in Article 7(1)(f) of the Regulation, uncertainties arose in the application of this prohibition, resulting in subjective interpretations by EU Member States. In response, the EUIPO, in collaboration with various sectors, developed "Common Practice CP14," approved in November 2023, to ensure a similar and predictable interpretation at the European Union level. Some aspects of the document are noteworthy.
The General Court of the European Union and the Board of Appeal of the EUIPO decided the case based on the understanding that, despite never being convicted, the criminal reputation of the citizen Pablo Escobar was indisputable. Starting from this assumption, they concluded that the relevant public would link the sign to criminal content, constituting an affront to public policy and accepted principles of morality, justifying the prohibition of its registration as a trademark. This line of reasoning suggests that signs associated with the criminal reputation of any individual or character should be treated similarly.
For illustration purposes, consider the character Robin Hood, notorious for stealing from the rich to give to the poor. Despite his criminal actions, the sign "Robin Hood" also evokes a heroic sense, which would mitigate any impediment to trademark registration based on a violation of public policy or accepted principles of morality.
It is important to note that a sign can evoke different or even contradictory interpretations, depending on the perspective. Thus, analyzing a possible violation of moral standards essentially considers the relevant public's perception, which depends on an empirical evaluation of what is socially acceptable at a given moment.
In the case in question, the General Court, supported by the Board of Appeal of the EUIPO, based its decision on biographical information about Pablo Escobar and references to works about his life. While the bibliographic data presented do not indicate how the relevant public perceives the sign in question, it should be noticed that, from a legal-formal perspective, the mentioned works, partly dramatized and fictional, are unsuitable sources for forming judgment.
Additionally, the Board of Appeal highlighted that, within the Spanish context, the term "Pablo Escobar" is directly linked to drug trafficking, as demonstrated by headlines mentioning criminals as "the Pablo Escobar of..." (Spain, Sweden, etc.). This information is decisive for justifying the prohibition of trademark registration, confirming the perception of the Spanish public that the term "Pablo Escobar" is associated with criminal activities. Effectively, the crucial factor for denying the registration of the term "Pablo Escobar" as a trademark does not reside in the personal reputation of the Colombian citizen but in how the relevant public interprets the sign, that is, whether they associate it (or not) with criminal activities.
Finally, the cultural variation in the perception of offensive signs is exemplified by the fact that "Pablo Escobar" has been registered as a trademark in Brazil. This highlights differences in the interpretation of signs and the application of rules related to public policy and accepted principles of morality among different cultures.
