Last month the government of Colombia denied the request of family members to register a trademark for the name (alongside the fingerprint and signature) of the notorious criminal and head of the Medellin drug cartel, Pablo Escobar. For families looking to protect or profit from the name of an (in)famous relative, there is a delicate balancing act between the right of publicity and registering a mark that offends morality.

In response to the attempt by Escobar’s widow and two children, who live in Argentina, to register the mark, the Commission of Industry and Commerce (CICC) said that to grant it would “offend [the] morality of Colombian society and public order”. The CICC added that the proposed mark “makes apology for violence and undermines public order, especially when taking into account the purpose of the services intended to protect, such as education, training and entertainment”. Escobar’s family argue that its trademark “sought to convey messages that invite reflection of humanity, hoping to generate a moral consciousness and morality”.

A market does exist for the Escobar brand and, despite the denial of the Class 41 application, Danilo Romero Raad of Romero Raad Abogados notes that the family members of Pablo Escobar do hold a device mark registration in Class 25, covering “clothing, footwear and headgear”, which is currently valid until September 28 2020. The family members of Pablo Escobar also own a registration for another ESCOBAR HENAO device mark in Class 25.

At present, branded clothing is sold in Mexico, the US, Austria, Puerto Rico and Guatemala, with the ESCOBAR HENAO and PABLO ESCOBAR GAVIRIA trademarks registered internationally – including at theUSPTO. However, while the clothing range is made in Colombia, the items are not sold there out of respect to Escobar’s victims. Colombia’s rejection of the mark is perhaps not a surprise. The country is a member of the Andean Community, the member nations working together to pursue development, integration and the harmonisation of trade policies, including IP matters, and the agreement between the nations expressly establishes that a mark will not be registered if it is against moral or public order.

Romero-Raad adds: “The morality prohibition is replicated through all Colombian IP provisions.” As to the motivations to apply for the mark, Romero-Raad concludes: “This is the most important country when referring to Pablo Escobar and for that reason they want to secure the IP rights under his name. It is hard to say but it is likely that eventually the family members of Pablo Escobar will want to sell products and provide services under the PABLO ESCOBAR trademark and, therefore, they want to apply for IP protection.”

The dispute illustrates the challenges that can occur when seeking protection for infamous figures, a trend that is not restricted to Colombia. Asked whether parallels could be drawn with US cases, Robert C Cumbow of Graham & Dunn PC offered the example of America’s relationship with “quasi romantic criminal figures such as John Dillinger, Pretty Boy Floyd and Baby Faced Nelson”. In these instances, the focus has fallen on publicity rights, Cumbow recalling a publicity claim brought by Dellinger’s heirs against EA Games for use of his name in connection with Tommy Guns in EA’s “The Godfather” video games.

The primary issue in the case centred on whether the state’s right of publicity statute, which provides protection for up to 100 years after the death of the personality, could be applied retroactively. While the claim failed, Cumbow says that that the important thing is that the claim was brought in the first place and “if the family can assert a right of publicity then they can force a license for the use of Dellinger’s likeness and be a nice income for them”.

This blog was first published in World Trademark Review on 7 October 2013

Editorial Credit: Jess Kraft / Shutterstock.com

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