Last 15 March, the European General Court ordered the nullity of the trademark "La Mafia se sienta en la mesa", since it was seen to be contrary to public policy in light of the fact that it was considered to be allusive to a criminal organization that it is known worldwide and contrary to the values of the EU.
The Spanish company La Honorable Hermandad, succeeded by La Mafia Franchises, filed a registration application in 2006 of an EU trade mark with the EUIPO.
The trade mark was registered in 2007 and in July 2015 the Italian Republic filed an application before the EUIPO for a declaration of invalidity against the contested mark claiming "it was contrary to public policy and to accepted principles of morality, since the word element ‘Mafia’ referred to a criminal organisation and its use in the contested mark to designate the applicant’s restaurant chain, in addition to arousing deeply negative emotions, had the effect of ‘manipulating’ the positive image of Italian cuisine and trivialising the negative meaning of that element."
The Cancellation Division upheld the application for a declaration of invalidity, so in April 2016, the Spanish company appealed the decision of the Cancellation Division. The First Board of Appeal of EUIPO confirmed that the contested mark was contrary to public policy and dismissed the appeal.
As La Mafia Franchises was not satisfied with EUIPO’s decision, it brought an action seeking the annulment of said decision before the General Court requesting the annulment of the contested decision, the declaration that the contested mark is valid and the order for EUIPO to pay the costs.
Before the substance, it must be taken into account that "The assessment of the existence of a ground for refusal under Article 7(1)(f) of Regulation No 207/2009 cannot be based on the perception of the part of the relevant public that does not find anything shocking, nor can it be based on the perception of the part of the public that may be very easily offended, but must be based on the standard of a reasonable person with average sensitivity and tolerance thresholds.
Moreover, the relevant public cannot be limited, for the purpose of the examination of the ground for refusal under Article 7(1)(f) of Regulation No 207/2009, 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 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."
Taking into account all of the above, the General Court held that the contested mark and particularly, the word element 'La Mafia', gave rise to the application of the absolute ground of refusal for several reasons:
First, it considered 'La Mafia' to be the dominant element "on account of its size and central position in the contested mark, it stands out of the other elements."
Second, it stated that 'La Mafia' "is understood world-wide as referring to a criminal organisation originated in Italy, whose activities extend to other States different from the ones of the Italian Republic, particularly in the European Union."
Third, the Court understood that "that criminal organisation resorts to intimidation, physical violence and murder to carry out its activities, which include, inter alia, drug trafficking, arms trafficking, money laundering and corruption." According to the General Court, those criminal activities breach the very values on which the EU is founded, in particular the values of respect for human dignity and freedom, which are indivisible and make up the spiritual and moral heritage of the EU. Moreover, given their cross-border dimension, the Mafia’s criminal activities are a serious threat to security throughout the EU.
Fourth, the Court said that 'La Mafia' "has deeply negative connotations in Italy, on account of the serious harm done by that criminal organisation to the security of that Member State", and "would manifestly bring to mind, for the relevant public, the name of a criminal organisation responsible for particularly serious breaches of public policy."
Fifth, the Court considers that "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. Moreover, it follows from a combined reading of the various subparagraphs of Article 7…, that they refer to the intrinsic qualities of the mark in question and not to circumstances relating to the conduct of the person applying for the trade mark."
The General Court concluded that "the mark «La Mafia se sienta a la mesa» refers to a criminal organisation, conveying a globally positive image of that organisation and trivialises the serious harm done by that organisation to the fundamental values of the EU. That mark is therefore likely to shock or offend not only the victims of that criminal organisation and their families, but also any person who, on EU territory, encounters that mark and has average sensitivity and tolerance thresholds, and must therefore be declared invalid."
Written by: Cristina Garcia Alzina
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