Pablo Escobar's family fails to register his name in Class 41

Colombia

The Colombian Trademark Office has decided the appeal in a case involving a trademark application for PABLO EMILIO ESCOBAR GAVIRIA to identify services in Class 41 of the Nice Classification ("rental of video tapes, sound recordings, films, film studies; film exhibitions, video tape production, recording studios; photography, photography services, publication and loan of books, arrangements of radio and television programmes, exhibitions, performances, museums, digital image processing, entertainment programmes, release of all types of texts, script writings, subtitles, photographic representations on the radio and in videos"). The application, which had been filed by Pablo Emilio Escobar-Gaviria’s widow and children, was denied.

Pablo Escobar was a well-known drug dealer that brought destruction, fear, violence, corruption and death to Colombia. He was finally killed on December 1 1993, but has hardly been forgotten.

The trademark application was denied based on the destruction and killings that the name of Pablo Escobar brings to the minds of Colombians. The mere name of Pablo Escobar reminds Colombians of several bombings (eg, bombing at a school fair where children died; bombing in Avianca flight No 1803, which killed 107 people; bombing in the Colombian Security Department building, which killed 63 people and left 1,000 people injured).

The Colombian Trademark Office considered that the trademark application fell within the prohibition set forth in Article 135, Subparagraph (p) of Andean Community Decision 486, which provides that a trademark cannot be registered if it is considered to be "contrary to law, morality, public order or proper practice”. Since the name of Pablo Escobar is associated with a decade of violence, registration of his name as a trademark would constitute an apology for drug dealing and terrorism. Hence, the application was considered to be contrary to morality and public order.

Arguably, the office followed the correct approach in refusing the application for services in Class 41. However, the trademark PABLO EMILIO ESCOBAR GAVIRIA has already been registered for goods in Class 25 in Colombia and the United States, among other countries, despite the fact that Pablo Escobar was the most wanted criminal of all times. A prohibition similar to that set forth in Andean Community Decision 486 may be found in the Lanham Act (under 15 USC §1052, a trademark application will be rejected if it "consists of, or comprises, immoral, deceptive or scandalous matter”), so it is surprising that registration was allowed in that country - especially in light of the fact that the United States was involved in the search for Pablo Escobar.

Although the prohibition set forth in Andean Community Decision 486 has rarely been applied, the application for PABLO EMILIO ESCOBAR GAVIRIA is not the only one that has been denied under Article 135, Subparagraph (p): applications for POPPER (Resolution No 55225 of 2009 of the Trademark Office, File No 08-37403) and DIVINO NIÑO (Resolution No 2503 of 2003 of the Trademark Office, File No 02-6156) were denied on the same grounds.

'Popper' is the popular name given to alkyl nitrites, a chemical substance which has caused several deaths among young people in Colombia. The application for POPPER covered goods in Class 25. The Trademark Office denied the application, stating that the term 'popper' evokes the name of a substance that constitutes a significant hazard to health and the normal functioning of society. Therefore, the application was contrary to morality, public order and proper practices.

The application for DIVINO NIÑO ('Holy Child', the venerated image of Christ at a young age) covered goods in Class 33 (alcoholic beverages). In this case, it was not the sign itself, but the goods it sought to cover, that led the Trademark Office to deny protection. As Colombia is a mostly catholic country, most Colombians would have been offended by the use of this trademark to identify alcoholic beverages.

The prohibition set forth in Article 135, Subparagraph (p) aims to prevent the registration of signs that can be hurtful in different ways. It aims to defend certain values and beliefs. Unfortunately, some signs have gone under the radar and have managed to obtain trademark protection. it is hoped that, in the near future, the Trademark Office will implement a procedure to cancel registrations that are, or might become, immoral or improper.

Sandra Ávila-González and Fernando Triana, Triana Uribe & Michelsen, Bogota

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