Introduction

In La Mafia Franchises SL v European Union Intellectual Property Office, the European Union Intellectual Property Office General Court dismissed an appeal against the revocation, upon request by the Italian government, of the EU figurative trademark LA MAFIA SE SIENTA A LA MESA ('The Mafia takes a seat at the table') (Figure 1), in which 'La Mafia' was the dominant element.(1) The mark was registered for:

  • clothing and footwear (Class 25);
  • business services including services in relation to franchises (Class 35); and
  • services for providing food and drink (Class 35).

Facts

The trademark was deemed to be "contrary to public policy and to accepted principles of morality, since the word element 'Mafia' referred to a criminal organisation".

In its grounds for appeal, the applicant (Spanish company La Mafia Franchises SL) maintained that the contested trademark, when considered as a whole (including the reference to sitting at a table) would have been "perceived as a type of parody or reference to the Godfather series of films", rather than "as intending to promote or support that criminal organisation". More specifically, considering the products and services claimed, the applicant maintained that "the contested mark was registered in order to designate a restaurant chain, the theme of which does not refer to a criminal organisation, but to the Godfather series of films, and, in particular, to the values of family and fellowship portrayed in those films". Other trademarks including the word 'Mafia' had already been granted and used for the same purpose.

Decision

However, these arguments were rejected. First and foremost, the General Court noted that, when it comes to the ground of refusal under Article 7(1)(f) of EU Regulation 207/2009 (now EU Regulation 1001/2016):

"consideration must be given to the fact that the signs 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."

Likewise, the court stressed that, with regard to Article 7(1)(f), "it is necessary to take account both of the circumstances common to all member states of the European Union and of the particular circumstances of individual member states which are likely to influence the perception of the relevant public within those states" – namely Italy, as the criminal organisation at issue originated in Sicily, southern Italy.

On these grounds, the court concluded that "the word element 'la Mafia' in the contested mark would manifestly bring to mind, for the relevant public, the name of a criminal organisation responsible for particularly serious breaches of public policy" and that the reference to love (the red rose) and to "the idea of sharing a meal" (the words 'se sienta a la mesa') "is such as to convey a globally positive image of the Mafia's activities and, so doing, to trivialise the perception of the criminal activities of that organisation", which is clearly contrary to public policy.

The General Court also dismissed the ground of appeal based on the registration in Italy or other countries of marks including the word 'Mafia'. In this respect, the court stressed that it is not "bound by - even if [it] may take them into consideration - decisions adopted in a member state, even in a situation where the decisions were adopted under national legislation harmonised at EU level".

For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094) or email (galli.mi@iplawgalli.it). The IP Law Galli website can be accessed at www.iplawgalli.it.

Endnotes

(1) Case T-1/17, March 15 2018.

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