In the world of intellectual property, the recent case of registering the trademark PABLO ESCOBAR has induced lively debate and raised many questions about the practice and fundamental principles of trademark protection.

Specifically, Escobar Inc., based in Puerto Rico (USA), filed an application for the registration of the trademark to the European Union Intellectual Property Office (EUIPO), consisting of the words PABLO ESCOBAR for classes of goods and services of the Nice Classification no. 3, 5, 9, 10, 12-16, 18, 20, 21, 24-26, and 28-45, which encompass a wide range of goods and services such as non-medicated toiletries, pharmaceutical products, jewelry, clothing, footwear, alcoholic drinks and banking services. EUIPO, by decision No. R 1364/2022-5 from June 1^st, 2022. rejected the application on the grounds that it was contrary to public policy and accepted principles of morality. The applicant Escobar Inc. has filed an appeal against this decision, and the EUIPO Board of Appeals dismissed the appeal by decision from February 21^st, 2023. The General Court of the European Union issued a Judgment on April 17^th, 2024, dismissing the action filed by Escobar Inc., stating in its reasoning that the name of the mark is associated with “drug trafficking and narco-terrorism and with the crimes and suffering resulting therefrom”. An appeal against this Judgment may be lodged with the Court of Justice of the European Union.

During the proceedings, Escobar Inc. argued that in this manner EUIPO violates the presumption of innocence, considering that Pablo Escobar was never convicted of the crimes attributed to him, and that the names like Bonnie and Clyde, Al Capone, or Che Guevara are already registered as EU trademarks. They also argued that there is no definition of the terms “public policy” and “accepted principles of morality”, and practice indicates that the examination of whether a mark is contrary to public policy or accepted principles of morality must be conducted in relation to the perception of the relevant public in the European Union. On the other hand, EUIPO states that previous registrations are merely a circumstance that may be taken into account, but without a mandatory decisive role.

It’s interesting to note that EUIPO has previously approved and registered trademarks such as THE GODFATHER, EL CHAPO, MAFIA, and YAKUZA. This raises a legitimate question about how the concepts of public policy and accepted principles of morality are interpreted, and why there is inconsistency in the practices of the authorities. The rejection of the application for the mark PABLO ESCOBAR may be seen as a newer trend indicating that EUIPO is now applying the conditions for trademark protection more strictly in the context of “public policy” and “accepted principles of morality” and additionally, this may have broader implications, including the possibility of cancellation of a previously registered trademarks that would be considered unacceptable in light of new interpretations of public policy and moral principles.

In light of this case, it is important to note the recent decision regarding the domain PabloEscobar.com, where through the UDRP procedure, it was determined that the domain belongs to Escobar Inc. The company argued that the domain was previously used for cybersquatting, meaning the unauthorized use of a famous name for the purpose of benefiting from it by the previous domain owners, Neil Okrent and Ivan Munguia. As a result, it was ordered that the domain be transferred to the company, recognizing it is legitimate interest and rights to the name Pablo Escobar. This decision was made considering that Escobar Inc. held the rights to the registered trademark PABLO ESCOBAR with the United States Patent and Trademark Office, and additionally, this trademark is also registered in Austria.

The debate over the interpretation of the terms “public policy” and “accepted principles of morality” in the context of trademark registration clearly highlights the need for more precise guidelines in this area of law. While expecting a potential decision from the Court of Justice of the European Union, PABLO ESCOBAR remains without a trademark in the EU, yet paradoxically, the recognition of this mark is growing.