Judgment of the General Court: The brand name "Pablo Escobar" is contrary to accepted principles of morality and cannot be registered

Judgment of the General Court of the European Union on the brand name "Pablo Escobar": A detailed analysis

In September 2021, Escobar Inc. based in Guaynabo, Puerto Rico, filed an application with the EUIPO the registration of the word "Pablo Escobar" as a EU trademark for a variety of goods and services. The EUIPO rejected the application in June 2022 as the brand name was contrary to public policy and morality pursuant to Article 7(1)(f) of the EU Trade Mark Regulation (EU) 2017/1001.

Escoblar Inc. appealed against this decision to the Fifth Board of Appeal of the EUIPO appeal. The Board of Appeal dismissed the appeal in February 2023 and confirmed the decision of the EUIPO.

Escobar Inc. brought an action against this before the General Court of the European Union ("EGC"). In essence, Escobar Inc. argued that the EUIPO and the Board of Appeal misinterpreted and misapplied Article 7(1)(f) of the Trade Mark Regulation and that the decision infringes the principles of freedom of expression and equal treatment.

Decision of the EGC:

The ECJ dismissed the action brought by Escobar Inc. in all respects. The ECJ justified its decision as follows:

1. interpretation and application of Article 7(1)(f) of the Trade Mark Regulation:

The EGC first clarified that the perception of the relevant target group in the EU is decisive when examining whether a sign is contrary to public policy and morality. In this case, this was in particular the Spanish public, as Pablo Escobar was particularly well known in Spain.

The EGC went on to state that the assessment of whether a sign is contrary to public policy and morality is based on the view of a reasonable person with average sensitivity and tolerance threshold. The opinion of the majority of the public or of those sections of the public who do not find the sign shocking or are very easily offended is not decisive.

The CFI found that the Board of Appeal had correctly taken into account the relevant circumstances, in particular the fact that Pablo Escobar is associated with drug trafficking and terrorism in Spain and is held responsible for numerous crimes that are unacceptable in modern democratic societies.

The EGC also rejected Escobar Inc.'s objection that the names of other alleged criminals who have become icons have already been registered as EU trade marks. The CJEU found that the Board of Appeal had rightly disregarded the decisions on those marks, as the assessment of public perception must be made on a case-by-case basis.

2. principles of freedom of expression and equal treatment:

The ECJ found that the refusal of the "Pablo Escobar" trademark did not violate the principles of freedom of expression and equal treatment. The ECJ emphasized that the Trade Mark Regulation pursues legitimate objectives, namely the protection of public policy and morality. The refusal of trademarks that violate these principles is therefore justified and does not interfere with the trademark owner's freedom of expression.

Conclusion:

The ECJ's decision makes it clear that the perception of the relevant target group in the EU is decisive when assessing whether a sign is contrary to public policy and morality. The assessment is made on the basis of an objective standard that reflects the view of a reasonable person with average sensitivity and tolerance threshold. The fact that other similar signs have been registered in the past is generally irrelevant, as the assessment of public perception must be made on a case-by-case basis. The rejection of a trademark that is contrary to public order and morality does not constitute an infringement of freedom of expression as it serves legitimate aims.