In March 2018 the EU General Court dismissed the action brought by the Spanish company “La Mafia Franchises” against the EUIPO’s refusal of registration of the European trademark (EUTM) “La Mafia se sienta a la mesa”, as contrary to the public policy and the accepted principles of morality in the European Union.
The EU Court stated that the element “Mafia” conveys to the relevant public, in particular the Italian consumer but also worldwide, the concept of a known criminal organization whose activities are contrary to the moral values of the European Union.
According to the applicant’s arguments, the fact that the mark refers to the term “MAFIA” is not sufficient to conclude that it is perceived as a promotion or endorsement of this criminal organization, but rather as a parody of the “Godfather” theme. Also, the fact that the mark refers to restaurants and food, and not to other service more relevant to criminal organizations, would reduce said risk.
In that connection, the Court clarified 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”. Also, the Court notes that the association of the word “MAFIA” with other positive signs, such as a red rose, contributes to cause a positive perception of such criminal activity and this cannot be accepted, according to the Decision.
Paradoxically, trade mark law provide the owner of a registered trade mark with an exclusive right which allows him to prevent later similar or identical trade marks to be used or registered where there is a risk of likelihood of confusion. In this case, the company whose mark is rejected and not registered can continue using such trade mark in the market and, at the same time, it would not be able to block third parties’ usage of identical or similar marks for restaurants, resulting this, hypothetically, in more “MAFIA” brands for restaurants in Europe!
Authors:
Riccardo Ciullo
Miriam Santin
The EU Court stated that the element “Mafia” conveys to the relevant public, in particular the Italian consumer but also worldwide, the concept of a known criminal organization whose activities are contrary to the moral values of the European Union.
According to the applicant’s arguments, the fact that the mark refers to the term “MAFIA” is not sufficient to conclude that it is perceived as a promotion or endorsement of this criminal organization, but rather as a parody of the “Godfather” theme. Also, the fact that the mark refers to restaurants and food, and not to other service more relevant to criminal organizations, would reduce said risk.
In that connection, the Court clarified 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”. Also, the Court notes that the association of the word “MAFIA” with other positive signs, such as a red rose, contributes to cause a positive perception of such criminal activity and this cannot be accepted, according to the Decision.
Paradoxically, trade mark law provide the owner of a registered trade mark with an exclusive right which allows him to prevent later similar or identical trade marks to be used or registered where there is a risk of likelihood of confusion. In this case, the company whose mark is rejected and not registered can continue using such trade mark in the market and, at the same time, it would not be able to block third parties’ usage of identical or similar marks for restaurants, resulting this, hypothetically, in more “MAFIA” brands for restaurants in Europe!
Authors:
Riccardo Ciullo
Miriam Santin
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