The Spanish trademark “La Mafia” is invalid

By judgement of March 15, 2018, the EU Court rejected the appeal brought by La Mafia Franchise, Sl and confirmed the invalidity of the EU trademark “La Mafia se sienta a la mesa” no. 5510921 registered in classes 25, 35 and 43 displayed below:

Because it is contrary to public policy.

On July 23 2015, the Italian Republic filed an application to have the trademark declared invalid ex. Art. 7 (1)(f) of Regulation no. 207/2009 (now Art. 7 (1)(f) of Regulation no. 2017/1001) maintaining that the trademark above was contrary to public policy and to accepted principles of morality, since the word element ‘Mafia’ referred to a criminal organization and its use had the effect of trivializing the negative sense of this element and of manipulating the positive image of the Italian cuisine, conclusions that the Cancellation Division accepted and that was also confirmed by the first Board of Appeal of EUIPO.

Worthless were the argumentations of the applicant which not only that the sign should be analyzed as a whole (and, therefore, the contested sign would not be perceived by the average consumer as intending to support that criminal organization) but on the contrary, the fact that the trademark was filed for a chain of restaurant should have made no possible reference to the criminal organization but to the Godfather film series instead and to the values of family and fellowship conveyed by those films.

The Court, on the contrary, in reaffirming what had been already highlighted by the Board of Appeal, underlined that the word Mafia evokes – in the relevant public – the name of the criminal organization responsible for the particularly serious breaches of public policy and that the fact that the mark designated a chain of restaurants had no relevance  since, as the judgement says, “when a sign is particularly shocking or offensive, it must be regarded as being contrary to public policy or to accepted principles of morality, irrespective of the goods and services for which it is registered”.

According to the European judge, the presence, in the contested mark of the wording se sienta a la mesa (“take a seat”) evokes the concept of sharing a meal and from there came the association of Mafia to the idea of conviviality which contributes both at strengthening the trivialization of the unlawful activity of that organization and at conveying an overall positive image to that sign.

Thus, the Court, accepting the argumentation of EUIPO and of the Italian republic, dismiss the action brought by La Mafia Franchises , SL and decided for the nullity of the EU mark “La Mafia se sienta a la mesa”.

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