General Court considers immoral EU trade mark

La Mafia restaurant chain to lose its "immoral" EU trade mark

The Spanish restaurant chain, La Mafia, is set to lose its decade-old EU trade mark after the Italian government requested its cancellation because it was contrary to "public policy" and "accepted principles of morality". The chain – which operates over 40 mafia-themed Italian restaurants in Spain – has failed to persuade the EU General Court that consumers will see the restaurants as a parody and reference to the Godfather films, rather than promoting and trivialising a criminal organisation.

After first opening in Spain back in 2000, the chain registered its figurative mark (shown above) as an EU trade mark in 2006. The mark consists of the name "La Mafia" combined with a red rose and the tagline "se sienta a la mesa" ("takes a seat at the table" in Spanish), and covers restaurant and franchise services (in classes 43 and 35) and apparel (in class 25). A decade later, the Italian government filed an application with the EUIPO that the mark should be declared invalid, after the chain's existence was publicised with a feature story in an Italian newspaper, resulting in a public outcry.

The EU Cancellation Division and (on appeal) the First Board of Appeal upheld the Italian government's application for a declaration of invalidity. The declaration has now been upheld by the EU General Court, on further appeal. Subject to any final successful appeal by the chain to the CJEU, its EU mark will therefore be cancelled.

The General Court agreed with the Italian government that the mark was contrary to "public policy", and should therefore be invalidated (under article 7(1)(f) of the EUTM Regulation), on the following grounds in particular:

• Under established EU case-law, a mark is contrary to public policy if it is deeply offensive. This is based on the standard of a reasonable person with average sensitivity and tolerance thresholds, not someone that does not find anything shocking nor someone that may be very easily offended. Further, the relevant public includes persons who will encounter the mark incidentally in their day-to-day lives, and is not limited to the public to which the goods and services covered by the mark are directly addressed. The case-law also recognises that public policy or accepted principles of morality may vary between EU Member States for linguistic, historic, social and cultural reasons.

• The EUIPO's examination guidelines provide that any mark which could be deemed to support a terrorist organisation which is listed in the EU Council's terrorist blacklist (Common Position 2001/931) will be contrary to public policy. The fact that the Mafia does not appear in the Council's blacklist – which is expressly referred to in the guidelines as being a non-exhaustive example of prohibited names - did not mean the mark was not contrary to public policy.

• The name "La Mafia" was the dominant element of the mark. The Mafia is understood worldwide as referring to a cross-border criminal organisation originating in Italy, which resorts to intimidation, physical violence and murder in carrying out its activities, including drug trafficking, arms trafficking, money laundering and corruption. The Mafia has deeply negative connotations in Italy, and considerable efforts have been made and many resources are devoted to combating the Mafia by the Italian government and at EU level. The element "La Mafia" in the mark would therefore manifestly bring to mind the name of a criminal organisation responsible for particularly serious breaches of public policy.

• The fact that the mark was not intended to shock or offend, but only to allude to the Godfather films, was irrelevant to the negative perception of the mark. Further, the mark itself did not directly refer to the films. The reputation acquired by the chain's mark in Spain and the concept of its theme restaurants were not intrinsic qualities of the mark and were therefore also irrelevant for the purpose of assessing whether it was contrary to public policy. Further, the fact that many books and films portraying the Mafia may shock or offend did not alter the perception of the harm done by that organisation.

• The combination of the name "La Mafia" with a red rose - a symbol for love or harmony – and the convivial tagline "se sienta a la mesa" also conveyed a positive image of the Mafia, and therefore trivialised its criminal activities.

• The mark was therefore likely to shock or offend not only the victims of that criminal organisation and their families, but also any person in the EU who encounters the mark and has average sensitivity and tolerance thresholds. The mark was therefore contrary to public policy and should be declared invalid.

• The Court held its finding was not called into question by the existence of several other third party EU and Italian trade mark registrations containing the word "Mafia", or by the Fourth Board of Appeal's decision in 2012 that the figurative mark "MAFIA II" (shown below) was not contrary to public policy. The Court merely held this was on the basis that the legality of such registrations could only be assessed under applicable law on a case-by-case basis, and that it was not bound by such earlier decisions – without specifying any grounds for potentially distinguishing those marks. However, it may be possible to distinguish the "MAFIA II" mark on the basis that it covered computer games, books, and entertainment services (in classes 9, 16 and 41). The Board of Appeal found the mark was not contrary to public policy for such goods and services, including on the basis that "the more logical and straightforward interpretation would be that in those books or games, organised crime is fought, on a purely fictional basis".

Case Ref: T-1/17

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