The General Court of the European Union upheld the decision of the EUIPO to refuse registration of the "Pablo Escobar" trade mark. What are the chances of registration in Switzerland?
Escobar made billions by founding and leading the Medellín cartel and the associated drug trafficking, causing the deaths of thousands of people. As Pablo Escobar lost his life in a shootout, Escobar was never convicted.
Proceedings in the EU
Escobar Inc., based in Puerto Rico and founded by Robert Escobar, the brother of the notorious Pablo Escobar, has attempted to register the mark “Pablo Escobar” with the European Union Intellectual Property Office (EUIPO) as a trade mark for a wide range of goods and services. The application was rejected by the EUIPO arguing that the name Pablo Escobar was contrary to morality and public policy.
Escobar Inc. appealed against this decision of the EUIPO to the General Court of the European Union (EGC) in Luxembourg and was again unsuccessful. The judges in Luxembourg confirmed the decision of the EUIPO and decided that the “Pablo Escobar” trade mark could not be registered. Although Pablo Escobar had never been convicted under criminal law, he was considered to be one of the biggest drug criminals and therefore a symbol of organized crime. As a consequence, the EGC stated that Pablo Escobar and therefore also the trade mark were contrary to the universal values of the EU. The average addressee would associate the name “Pablo Escobar” with drug trafficking and drug terrorism as well as the associated crimes and suffering. Escobar Inc., on the other hand, argued that the name is no longer associated with Escobar's criminal record. Rather, Escobar is known for the zoo he founded and his altruistic deeds. However, the applicant did not succeed with this argument and the court confirmed the EUIPO's decision and refused to register the trade mark.
What would be the Legal Situation in Switzerland?
Overview
The Swiss Trade mark Protection Act (TmPA) distinguishes between absolute (Art. 2 TmPA) and relative grounds for exclusion of registration (Art. 3 TmPA). The relative grounds for exclusion include the right of the proprietor of an earlier trade mark to take action against identical or similar signs intended for identical or similar goods or services if there is a likelihood of confusion. Relative grounds for the exclusion of protection are therefore only examined if another market participant takes action against them. Absolute grounds for exclusion, on the other hand, exist independently of other trade marks existing on the market and are examined ex officio when the trade mark application is filed. Absolute grounds for refusal include.
- signs that are in the public domain, except where they have become established as a trade mark through use for the goods or services for which they are being claimed (lit. a)
- shapes that constitute the nature of the goods themselves or shapes of the goods or their packaging that are technically necessary (lit. b)
- misleading signs (lit. c)
- signs contrary to public policy, morality or applicable law (lit. d)
Whether an absolute ground for exclusion applies is assessed from the perspective of the average addressee of the relevant public in Switzerland. It is therefore examined how this target group would perceive and interpret the sign in question. The overall impression of the sign is decisive.
In the present case, the ground for exclusion under Art. 2 lit. d TmPA could be applied. A distinction must be made between public policy and morality:
Public policy: The concept of public policy encompasses the fundamental principles of Swiss law. Public policy aims to protect public safety, peaceful coexistence, the reputation of the political system, public dignitaries or relations with other nations. For example, trademarks that incite or glorify violence, crime, terror or war, trademarks that are contrary to the fundamental values of the protection of minors, public health or the environment, trademarks that contain the names of public figures or that could jeopardise the reputation of Switzerland are contrary to public policy.
Morality: In case law morality is defined as the prevailing morals, i.e. the ethical principles and values recognized by broad sections of the population. These are unwritten norms. The protected goods of morality include social peace and respectful interaction between fellow citizens. For matters of trade mark law, signs are considered immoral if they are likely to offend the socio-ethical, moral, religious or cultural sensibilities of broad sections of the population, whereby the latter criterion should not lead to the protection of minorities being undermined. For example, signs with discriminatory or racist, anti-religious, pornographic, sexually offensive or otherwise violating human or animal dignity are considered to be contrary to morality. In contrast to public policy, the aim is to protect the interests of the relevant public rather than protection of national interests.
The immorality must result from the sign itself or the reference to the products or services for which protection is sought. However, according to the Federal Supreme Court, the immorality can also consist solely in the commercial use of the sign as the use of religious signs shows. The religious sign itself has no immoral content. However, the commercial use of the trade mark, can under certain circumstances offend the religious feelings of the relevant public (Madonna decision, see below).
The understanding of what constitutes "morality" is subject to constant change. The Federal Administrative Court also argues in the same way with regard to sexually offensive marks. The assessment of morality must take into account current circumstances. In particular, there has been a liberalisation in the area of sexuality, which means that it is quite possible that trademarks which were previously considered immoral are no longer considered sexually offensive according to today's understanding. On the other hand, an increasingly multicultural society shows a more sensitive attitude to respect for religious feelings than in the past.
Examples from Swiss practice
Madonna: The Swiss Federal Institute of Intellectual Property (IPI) refused to register the trade mark “Madonna” arguing that the commercial use of Madonna, the Italian name for Mary of Nazareth, violated the religious feelings of members of the Catholic Church. The Madonna mark was therefore contrary to morality. The Federal Supreme Court confirmed the refusal in its ruling of September 22, 2010.
Christ: The IPI accepted to register the trade mark “Christ”. Although the term is used to refer to followers of Christianity or as a short form of “Jesus Christ”, “Christ” is also an very common surname in Switzerland. Given the frequency of the surname (with almost 70,000 telephone directory entries at the time), the meaning of the surname prevailed. Therefore, its commercial use was not considered immoral, at least within Switzerland.
Mindfuck: According to the IPI, the trade mark “Mindfuck” is contrary to morality. The trade mark is a combination of the terms “mind” and “fuck”, the latter being a vulgar synonym for the act of sexual intercourse. The sign thus contains a sexually offensive, obscene element, which would be perceived as offensive by at least some of the relevant public, making it contradictory to morality. The Federal Administrative Court followed this view in its ruling of March 23, 2017.
Buddha-Bar: The registration of the trade mark “Buddha-Bar” was refused by the IPI. Buddha is regarded as the founder and religious figure of Buddhism and is therefore equivalent to the name of a religiously revered person. Commercial use would therefore offend the religious feelings of followers of the Buddhist faith. Since the goods and services the trade mark was applied for had no religious content or reference, the sign was contrary to morality. The Federal Administrative Court supported this view in its ruling of December 9, 2010.
Happy-Wars: The IPI accepted to register the trade mark “Happy-Wars”. There was no risk that the trade mark would harm Switzerland's national interests or the feelings of foreign nationals. Furthermore, it does not have any racist, anti-religious or sexually offensive content. It was therefore not considered contrary to public order or morality.
Bin Ladin: In July 2002, the IPI ordered the revocation of the “Bin Ladin” trade mark registered in August 2001. After the attacks of September 11, 2001, perceptions have changed and the trade mark was then associated with Osama bin Laden. The Federal Appeals Commission did not confirm the IPI's decision and rejected the revocation of the trademark. The law would not provide for the possibility of a subsequent revocation ex officio. Nevertheless, the Appeals Commission assessed whether the revocation would have been justified by public interests. However, as this was an irrevocable order in principle, only "particularly important public interests" would have justified revocation. The Appeals Commission considered that “Bin Ladin” was a common surname in the Arabic-speaking hemisphere. In addition, it had not been definitively proven at the time that Osama bin Laden was responsible for the terrorist attacks. The Appeals Commission therefore concluded that the trade mark was not fundamentally contrary to morality or public policy. However, the decision of the Appeals Commission cannot be applied 1:1 to the registration practice, as the issue at hand was revocation and not registration. The requirements for revocation are considerably higher.
Would the registration of the Escobar trade mark be successful in Switzerland?
Under Swiss law, a refusal of the trademark application on the grounds that it is contrary to morality or public policy could be considered. We believe that the IGE would most likely follow the EGC and refuse to register the "Pablo Escobar" trademark in Switzerland too.
Not least, the popular Netflix series Narcos, which documents the life of Pablo Escobar and focuses on the development of the Medellín cartel and the drug trafficking and terror associated with it, has recently reinforced the perception of the average target audience that Pablo Escobar is a drug criminal and thus a symbol of organised crime. Even if Pablo Escobar did indeed work for the general public, and in particular for the poorer sections of the population, the majority of the relevant public is likely to associate the name Pablo Escobar with his criminal record.
In addition, the IPI would most likely be affected to some extent by the EGC decision. However, the EGC based its decision on the perception of the average Spaniard. According to the EGC, they are most likely to know Pablo Escobar and associate him with drug trafficking and drug terrorism. The decisive factor for registration in Switzerland would therefore be whether the perception of the average Swiss addressee should be assessed accordingly, or whether the perception of Pablo Escobar by the average Swiss addressee would be different from that of the average Spaniard.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.