Trademark registration

We can find answers to such questions in a recent judgment of the General Court of the EU, which examined whether the registration of the sign ‘Pablo Escobar’ as a trade mark was legitimately refused.

On 30 September 2023,

Escobar Inc. of Guaynabo, Puerto Rico (the “Company“) applied for registration of the word mark “Pablo Escobar” (EUTM: 018568583) for a number of classes of goods and services, viz.

: 3, 5, 9, 10, 12, 13, 14, 15, 16, 18, 20, 21, 24, 25, 26, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45 (“Trademark“)

First, on 1 June 2022,

examiner rejected the application for the Trademark in its entirety, and then the Fifth Board of Appeal of the EUIPO upheld his decision.

The examiner, as well as the EUIPO Fifth Board of Appeal, found that the Trademark was contrary to public policy or morality (Article 7(1)(7) of Regulation 2017/1001[1]).

In its application, the Company pointed out that:

1. “the concepts of ‘public policy’ and ‘morality’ do not have legal definitions, and therefore the test to determine whether a sign conflicts with them must be referred to their perception by the relevant public to which the goods and services bearing them are directed, and with reference to a particular EU Member State, since the accepted principles of morality may differ from one part of the EU to another;
2. EUIPO did not take into account previous registrations of signs such as:

1. “Al Capone”, or signs consisting of the members “Che Guevara”;
2. the EUIPO did not address the entirety of the arguments presented by the Company;
3. the figure of Pablo Escobar is a legend, the Robin Hood myth of Colombia, and is a pop culture icon, including through the TV series “Narcos” broadcast worldwide on the Netflix streaming platform;
4. there has been no criminal conviction against Pablo Escobar, so he enjoys the presumption of innocence.

The General Court of the EU, by its judgment of 17 April 2024 in Case T-255/23, dismissed the Company’s appeal against the decision of the Fifth Board of Appeal of the EUIPO of 21 February 2023,

Ref. R 1364/2022-5.

The main grounds on which the EU General Court relied in dismissing the action will be set out below:

1. the notions of ‘public policy’ and ‘decency’ cannot be examined in limitation to the public to which the goods and services bearing the trade mark for which registration is sought are directly intended,
2. EUIPO should take into account its previous registrations of signs which consisted of the names of alleged offenders, whereas if it does not currently wish to follow the same decision it should give clear and unequivocal reasons for doing so;

1. the legality of EUIPO’s decision should be assessed on the basis of the provisions of Regulation 2017/1001 and the case law of the courts, and not its previous decision-making practice;
2. EUIPO is not obliged to respond to every argument that is put forward by a party;

1. 1. the popularity of Pablo Escobar and the portrayal of him in a sympathetic or amusing manner, but emphasising his role as a criminal in various types of merchandise, does not preclude his being perceived in a derogatory manner;
   2. the failure to convict does not preclude the general perception of the person concerned as a symbol of an organised criminal group

.

The conclusion to be drawn from the judgment in Case T-255/23 is that it is possible to register a sign consisting of the forename and surname of a person generally regarded as a criminal or of a person already convicted, but everything depends on the facts of the case.

Undoubtedly, there are a number of arguments ‘for’ and ‘against’ the possibility of registering a surname as a trade mark.

On the one hand, if the surname already constitutes an established personal brand and is thus commercial in nature and therefore has distinctive capacity.

On the other hand, the registration of a surname as a trade mark may lead to an infringement of personal rights, in particular if the heirs of the trade mark protagonist in question do not wish to be depicted publicly or if simply one name is borne by several people and therefore creates a misleading association between the person in question and the sign.

However, as the judgment of the EU General Court can be appealed to the CJEU, we can expect the ongoing discussion regarding good morals in trade mark registration practice to continue.

[1] Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ EU.L.2017.154.1) (hereinafter: “Regulation 2017/1001“).

Authors:

• apl. adw. Mariola Połeć