Trib. UE 17 April 2024 , T-25/23, Escobar inc c EUIPO, sull’art. 7.1.f reg. 2017/1001 applicato al marchio costituito dal nome del noto boss della droga:
<<17 As the Board of Appeal correctly pointed out in paragraphs 21 to 23 of the contested decision, the relevant public cannot be limited, for the purposes of the examination of the ground for refusal provided for in Article 7(1)(f) of Regulation 2017/1001, solely to the public to which the goods and services in respect of which registration is sought are directly addressed. Consideration must be given to the fact that the sign caught by that ground for refusal will shock not only the public to which the goods and services designated by the sign are addressed, but also other persons who, without being concerned by those goods and services, will encounter that sign incidentally in their day-to-day lives (see judgment of 15 March 2018, La Mafia Franchises v EUIPO – Italy (La Mafia SE SIENTA A LA MESA), T‑1/17, EU:T:2018:146, paragraph 27 and the case-law cited).
18 In addition, in order to apply that ground for refusal, it is necessary to take account not only of the circumstances common to all Member States of the European Union but also the particular circumstances of individual Member States which are likely to influence the perception of the relevant public within those States (see judgment of 15 March 2018, La Mafia SE SIENTA A LA MESA, T‑1/17, EU:T:2018:146, paragraph 29 and the case-law cited).
19 In paragraph 24 of the contested decision, the Board of Appeal found that the goods and services covered by the mark applied for were aimed at a professional public and at the general public, whose level of attention would vary from low, in respect of everyday consumer goods, to high, in respect of very sophisticated goods or services. However, as stated in paragraphs 28 to 34 of the contested decision, it chose to assess, in the present case, the existence of the ground for refusal referred to in Article 7(1)(f) of Regulation 2017/1001 in relation to the Spanish public, on the ground that that was the public most familiar with the Colombian national called Pablo Escobar, born on 1 December 1949 and presumed to be a drug lord and narco-terrorist who founded and was the sole leader of the Medellín cartel (Colombia), on account of the privileged links, in particular historical links, between Spain and Colombia.
20 Those assessments, which, moreover, are not disputed by the parties, appear to be well founded and may be upheld, with the result that, in the present case, it is necessary to focus on the relevant Spanish public in order to assess, for the purposes of examining the present plea, the existence of the absolute ground for refusal referred to in Article 7(1)(f) of Regulation 2017/1001.
21 In paragraphs 46 to 54 of the contested decision, the Board of Appeal found that at least a non-negligible part of the relevant Spanish public would associate the mark applied for with Pablo Escobar, perceived as a symbol of a drug lord and a narco-terrorist.
22 In paragraphs 55 to 69 of the contested decision, it found that the mark applied for, understood in the manner referred to in paragraph 21 above, would be perceived as being contrary to public policy and to accepted principles of morality by the non-negligible part of the relevant Spanish public which would associate it with the crimes committed by the Medellín cartel or directly attributed to Pablo Escobar, which were unacceptable in modern democratic societies, as they were absolutely contrary to the recognised ethical and moral principles, not only in Spain but also in all EU Member States, and constituted one of the most serious threats to the fundamental interests of society and the maintenance of social peace and order. The mark applied for contradicts, for a non-negligible part of the general public exposed to it, the indivisible and universal values on which the European Union is founded, namely human dignity, freedom, equality and solidarity, and the principles of democracy and the rule of law, as proclaimed in the Charter, and the right to life and physical integrity. Furthermore, for the many consumers of the goods and services at issue who, in particular in Spain, share those values, the mark applied for could be perceived as being highly offensive or shocking, as an apology of crime and a trivialisation of the suffering caused to thousands of people killed or injured by the Medellín cartel, of which Pablo Escobar was the presumed leader. That suffering is not erased by the actions in favour of the poor or the role of ‘Robin Hood’ which the applicant or many Colombians attribute to Pablo Escobar in Colombia, or by the fact that he has become an icon of popular culture in Spain.
23 Lastly, in paragraphs 70 to 78 of the contested decision, the Board of Appeal rejected the applicant’s arguments alleging that signs identical with, or similar to, the mark applied for had already been applied for or registered, as trade marks, by national offices or by EUIPO, observing that, in some of those decisions, the signs at issue had been refused registration on the ground that they were contrary to public policy and to accepted principles of morality, and that, in any event and according to the case-law, the Board of Appeal was not bound by those decisions and had to rule solely on the basis of Regulation 2017/1001.
24 However, the applicant complains that the Board of Appeal did not examine, in the contested decision, whether the majority of that public would perceive the mark applied for as being immoral. It should be borne in mind that, according to the case-law, the assessment of the existence of a ground for refusal under Article 7(1)(f) of Regulation 2017/1001 cannot be based either on the perception of the majority of the relevant public taken into account or on that of the parts of that public that does not find anything shocking or that may be very easily offended, but must be based on the standard of a reasonable person with average sensitivity and tolerance thresholds (see, to that effect, judgment of 15 March 2018, La Mafia SE SIENTA A LA MESA, T‑1/17, EU:T:2018:146, paragraph 26 and the case-law cited; see also, to that effect, judgment of 27 February 2020, Constantin Film Produktion v EUIPO, C‑240/18 P, EU:C:2020:118, paragraph 42).
25 In the contested decision, the Board of Appeal correctly referred, in the light of the case-law cited in paragraph 24 above, to the perception of the persons who, within the relevant Spanish public taken into account, could be regarded as reasonable and having average sensitivity and tolerance thresholds and who, as such, shared the indivisible and universal values on which the European Union is founded.
26 Accordingly, the applicant is not justified in claiming that the Board of Appeal misinterpreted or misapplied or applied Article 7(1)(f) of Regulation 2017/1001 too liberally, by not referring, in that regard, to the perception of the majority of the persons making up the relevant Spanish public taken into account.
27 Furthermore, in the contested decision, the Board of Appeal was justified in finding that the persons referred to in paragraph 25 above would associate the name of Pablo Escobar with drug trafficking and narco-terrorism and with the crimes and suffering resulting therefrom, rather than with his possible good deeds in favour of the poor in Colombia, and would therefore perceive the mark applied for, corresponding to that name, as running counter to the fundamental values and moral standards prevailing within Spanish society.
28 The fact, evidenced by the documents produced in the file by the applicant, that the names of Bonnie and Clyde, Al Capone or Che Guevara have already been registered as EU trade marks, which have subsequently either expired or been cancelled, is not such as to call into question the assessments by which the Board of Appeal correctly interpreted and applied, in the present case, Article 7(1)(f) of Regulation 2017/1001, as interpreted by the case-law, by referring to the specific perception of the name Pablo Escobar by the persons referred to in paragraph 25 above.
29 In that regard, it should be noted that, according to the case-law, the decisions concerning the registration of a sign as an EU trade mark which EUIPO is led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65)>>. –> Il precedente non è vincolante: il giudice (l’Ufficio EUIPO) è soggetto solo alla legge
