EU General Court rules on ‘Pablo Escobar’ trade mark - Erasmus University sues Studocu for copyright infringement

EU General Court refuses registration of 'Pablo Escobar' trade mark

On 17 April, in case T-255/23, the General Court of the European Union rejected the application for registration of the EU word mark "Pablo Escobar", upholding the decision of the EUIPO, which considered it contrary to public policy.

In September 2021, Escobar Inc, the company founded by Pablo Escobar's brother, Roberto de Jesús Escobar, applied to the EUIPO to register the EU word trade mark N 018568583 "Pablo Escobar". It covers a large number of goods and services in Classes 3, 5, 9, 10, 12 to 16, 18, 20, 21, 24 to 26 and 28 to 45 of the Nice Classification. The designated goods include perfumes, motor vehicles, firearms, musical instruments and tobacco. Services such as advertising and marketing, financial services and transport and delivery services were also included.

However, both the examiner in the case and the Fifth Board of Appeal of the EUIPO refused the application for all the designated goods and services on the grounds that the mark was contrary to public policy or morality within the meaning of Article 7(1)(f) of Regulation 2017/1001 (EUTMR).

Article 7(1)(f) of the EU Trademark Regulation states that signs contrary to public policy or morality, i.e. which encourage or incite behaviour which is unlawful, immoral or harmful to society in general, may not be registered as a trade mark. This may include marks which contain obscene, discriminatory, hateful or intolerant words.

Escobar Inc appealed to the General Court of the European Union, which had to decide whether the trade mark "Pablo Escobar" was contrary to public policy.

The Court upheld the EUIPO's decision that the mark was contrary to public policy and accepted principles of morality. The Court agreed that a substantial part of the relevant Spanish public would associate the mark with Pablo Escobar, who is perceived as a symbol of drug trafficking, organised crime and the serious crimes associated with it, which is contrary to the values of dignity, freedom, equality and solidarity upheld by the European Union. Therefore, the General Court rejected the application for registration of the trade mark.

Although the applicant argued that other names of alleged criminals had already been registered as EU trade marks, such as Bonnie and Clyde, Al Capone or Che Guevara. The Court held that, unlike previous cases in which the offensiveness of criminal names may have diminished over time as a result of their transformation into historical figures, in the case of Pablo Escobar the connection with contemporary criminal activities and serious crimes, such as drug trafficking and terrorism, was more prevalent and harmful to society. Therefore, the refusal to register the mark "Pablo Escobar" was based on the current and prevailing public perception of this particular name, which was considered incompatible with the values of the European Union.

Erasmus University sues Studocu for copyright infringement

In April, the Erasmus University of Rotterdam filed a lawsuit against Studocu, a platform for sharing documents between students, for copyright infringement.

The lawsuit focuses on the website Studeersnel.nl, which is operated by Studeersnel BV, known as Studocu outside the Netherlands. While this platform aims to facilitate the exchange of educational resources between students worldwide, it also provides access to lectures, assignments and other educational materials created by professors at the Erasmus University of Rotterdam. The university claims that it owns the copyright to these materials and argues that they should not be hosted on the Studocu platform.

In addition to seeking the removal of the unauthorised shared educational material, according to Studocu the University is requesting the platform to filter and block all material uploaded by students from its institution. Under the Digital Services Act, Studocu, as a hosting provider, is obliged to do its best to prevent and deal with infringements of intellectual property rights. To comply with this obligation, Studocu set up a Take-Down request option on their platform, and claim that doing so fulfils its obligations.

This case is quite controversial, not only because of the possible blocking of a specific group of users (students of the Erasmus University of Rotterdam would therefore be blocked from using the platform), but also because some teachers voluntarily upload their materials to the platform and blocking them could constitute a copyright infringement.