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The Mafia Suffers Another Setback

28 Mar 2018

That the Mafia are contrary to public policy is perhaps not the most surprising pronouncement a court might make but, in this instance, the decision relates to a trade mark for a restaurant.

Background

The General Court of the European Union has upheld the European Union Intellectual Property Office’s (EUIPO) earlier decision to declare a figurative trade mark registered by La Mafia Franchises SL, a chain of Italian restaurants based in Spain, as invalid on the grounds that the mark is contrary to public policy in contravention of Article 7(1)(f) of the EU Trade Mark Regulation.  The mark which is featured below depicts a red rose along with the words “La Mafia SE SIENTA A LA MESA” which, literally translated, means ‘The Mafia takes a seat at the table”.

 

The application seeking the invalidation of the trade mark was brought by The Republic of Italy which asserted that the mark was contrary to public policy and to accepted principles of morality, since the word element ‘Mafia’ refers to a criminal organisation and its use in the mark to designate the applicant’s restaurant chain, in addition to arousing deeply negative emotions, has the effect of ‘manipulating’ the positive image of Italian cuisine and trivialising the negative meaning of that element.

La Mafia Franchises SL argued that:-

  1. The Mafia nor its members are included in the list of terrorist persons and groups to which EUIPO’s examination guidelines refer for the purpose of illustrating the prohibition of registration of EU marks that are contrary to public policy.
  2. That fact that the contested mark refers to the word element ‘Mafia’ was not sufficient to conclude that it is perceived by the average consumer as intending to promote or support that criminal organisation and that other elements that make up the mark rather imply a parody or reference to the Godfather series of films.
  3. The general public will understand 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.
  4. Many EU marks and Italian marks including the term ‘Mafia’ have been registered and are in force.

Held

In holding the mark to be invalid on the grounds of public policy, the General Court of the EU held that:-

  1. The assessment of the existence of a ground for refusal on public policy grounds must be based on the standard of a reasonable person with average sensitivity and tolerance thresholds.  The relevant public cannot be limited to the public to which the goods and services are directly 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.  It is also necessary to take account both of the circumstances common to all Member States of the EU and of the particular circumstances of individual Member States which are likely to influence the perception of the relevant public within those States.
  2. The word element ‘La Mafia’, on account of its size and central position in the mark, was distinct from the other elements and was the dominant element.
  3. The purpose of the list of terrorist persons and groups is not to set out the persons, groups and entities involved in other types of criminal activity.  It is clear from the wording of the EUIPO’s examination guidelines that the list of examples provided in the guidelines is not exhaustive.
  4. ‘La Mafia’ is understood world-wide as referring to a criminal organisation originating in Italy, whose activities extend to States other than the Italian Republic and that that such criminal activities breach the values on which the EU is founded.  Furthermore ‘La Mafia’ has deeply negative connotations in Italy, on account of the serious harm done by it to the security of Italy. In light of this it was correct that the word element ‘La Mafia’ in the mark would bring to mind, for the relevant public, the name of a criminal organisation responsible for particularly serious breaches of public policy.
  5. No element of the mark directly refers to the Godfather film series.
  6. The mark, considered as a whole, refers to a criminal organisation, conveys a globally positive image of that organisation and, therefore, trivialises the serious harm done by that organisation to the fundamental values of the EU. The mark is therefore likely to shock or offend not only the victims of the Mafia and their families, but also any person who, on EU territory, encounters the mark and has average sensitivity and tolerance thresholds.
  7. This finding is not affected by the existence of several other EU marks that include the word element ‘Mafia’. The legality of a decision must be assessed solely on the basis of the EU Trade Mark Regulation and not on the basis of previous decision-making practice.

 

Conclusion

In addition to Article 7(1)(f) of the EU Trade Mark Regulation setting out public policy grounds there are several other absolute grounds which exist for refusing to register a trade mark and which may also be cited against a mark which has been registered in order to seek to have that mark declared invalid.

DMH Stallard has a team of intellectual property specialists who can advise and assist on these and the range of IP protection and enforcement options available for clients. 

For more information contact James Martin at James.R.Martin@dmhstallard.com or on +44 (0)20 7842 1509

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