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15 March 2018Trademarks

EU court rules ‘Mafia’ TM invalid over public policy fears

The EU General Court has today ruled that an EU trademark featuring the words ‘La Mafia’ is invalid because it “trivialises the serious harm” done by the criminal organisation to the “fundamental values of the EU”.

In 2006, Spain-based restaurant chain La Mafia Franchises (then known as La Honorable Hermandad) applied to register the sign ‘La Mafia’ as an EU trademark at the European Union Intellectual Property Office (EUIPO). The words “Se sienta a la mesa” and a single red rose are also featured on the mark.

The trademark falls under class 25 for footwear and clothing, class 35 for business management, and class 43 for food and drinks services.

Italy filed an application with the EUIPO in 2015, claiming that the sign was invalid on the grounds that it was “contrary to public policy”. It argued that the word “mafia” referred to the criminal organisation and that its use would arouse “deeply negative” emotions.

The EUIPO’s Cancellation Decision upheld Italy’s opposition in March 2016.

La Mafia appealed against the decision to the EUIPO’s First Board of Appeal, which found that the word element “La Mafia” was the dominant element of the trademark and that it promoted the criminal organisation.

Again, La Mafia appealed. Before the General Court, the Spanish chain argued that the trademark must be analysed as a whole.

La Mafia also contended that the other elements that make up the trademark imply it parodies or references the “Godfather” series. The movie series’ main character, Don Vito Corleone, is often seen wearing a red rose, similar to that of the rose featured in the trademark.

However, the General Court ruled that “La mafia” is the dominant element of the trademark. Therefore, the board was right to find the wording would bring the name of the criminal organisation to the mind of the relevant public.

The court also said that the trademark conveys a globally positive image of the criminal organisation.

“The contested 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,” said the court.

The General Court dismissed the action and ordered La Mafia Franchises to pay the costs.

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