La mafia SE SIENTA A LA MESA

Judgment of the General Court of 15 March 2018 ECLI:EU:T:2018:146

“Trade mark of the European Union – Invalidity proceedings – EU figurative mark La Mafia SE SIENTA A LA MESA – Absolute ground for refusal – Whether contrary to public policy or to accepted principles of morality – Article 7(1)(f) of Regulation (EU) 2017/1001”

On 20 December 2007, the enterprise La Mafia Franchises, S.L. (hereinafter, the appellant) was granted registration for the EU figurative mark “La Mafia SE SIENTA A LA MESA” for goods and services in Classes 25, 35, and 43 of the Nice Agreement.

On 23 July 2015, the Italian Republic filed an application with EUIPO for a declaration that the trade mark was invalid, invoking the ground set forth in Article 7(1)(f) of Regulation 2017/1001. The Italian Republic maintains that the trade mark is contrary to public policy and to accepted principles of morality, due to the negative connotation of the word element “Mafia”, in addition to having the effect of “manipulating” positive image of Italian cuisine and trivialising the negative meaning of that element.

The Cancellation Division upholds the application for a declaration of invalidity, which is later confirmed by the Board of Appeal of EUIPO by asserting that the trade mark is contrary to public policy.

The appellant files an appeal before the General Court asking that the contested decision be cancelled and validity of the trade mark be declared.

The issue in dispute is the word element “La Mafia” and its negative connotation.

The General Court stresses that the word element “La Mafia” is the dominant element in the trade mark, and it is understood as a dangerous, criminal organisation that breaches the values on which the EU is founded and that the word element, “La Mafia,” has deeply negative connotations in Italy. The Court confirms that the element “La Mafia” brings to mind, for the relevant public, the name of a criminal organisation responsible for particularly serious breaches of public policy.

Furthermore, the General Court first finds that the fact that La Mafia franchises claim that the purpose of registering the trade mark “La Mafia SE SIENTA A LA MESA” is not to shock or offend but to allude to the film series The Godfather is irrelevant to the negative perception of the mark by the relevant public. The reputation acquired by the enterprise’s trade mark and the concept of its themed restaurants are irrelevant for the purpose of assessing whether the trade mark is contrary to public policy. The Court also points out that the fact that there are many books and films on the subject of the Mafia in no way alters the perception of the harm done by that organisation. Finally, the General Court supports the analysis made by EUIPO and Italy that the association of the word element “La Mafia” with the sentence “SE SIENTA A LA MESA” along with a red rose may convey a positive image about the activities of La Mafia and trivialise the illicit activities of that criminal organisation.

The General Court concludes that the trade mark “La Mafia SE SIENTA A LA MESA” refers to the criminal organisation, conveys a positive image of that organisation by trivialising the serious harm done by the organisation. The mark is therefore likely to shock or offend not only the victims, but also any person who encounters that mark and has average sensitivity and tolerance thresholds, and should therefore be declared invalid.

Based on the foregoing, the General Court agrees in its judgment to dismiss the appeal.