Mafia Enough!

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The EU General Court has ruled that the trademark ‘mafia’-registered in Europe by a Spanish company-is invalid on the grounds that it is contrary to public order and morality. Out of respect for the thousands of victims and the efforts carried out by institutions to combat the organized crime infamously known under that name.

‘La Mafia se sienta a la mesa,’ trademark nullity

The Spanish company ‘La Honorable Hermandad’ (successor to ‘La Mafia Franchises’) filed an application with the EUIPO, European Union Intellectual Property Office, in 2006 to register the EU trademark ‘La Mafia se sienta a la mesa’. In relation to, among other things, catering services.

In 2015, the Italian Republic filed an application with EUIPO to have this mark declared invalid as contrary to public order and morality.

‘The Italian Republic found, in essence, that the contested mark was contrary to public order and morality, since the verbal element “mafia” referred to a criminal organization and that its use in the said mark for the purpose of designating the plaintiff’s restaurant chain, in addition to arousing deeply negative feelings, had the effect of “manipulating” the positive image of Italian gastronomy and trivializing the negative meaning of that element.’ (2)

EUIPO – the European Union Intellectual Property Office – granted Italy’s application for a declaration of invalidity of the obscene trademark in question, by decision 3.3.2016 of its Cancellation Division.

However, the Spanish operator insisted, filing an appeal – on 4/29/2016 – against the decision of the annulment division. However, the First Board of Appeal of the EUIPO confirmed that the mark was contrary to public policy, dismissing the appeal in a decision dated Oct. 27.10.16.

EUIPO highlighted, in particular, that:

– the trademark ‘La mafia se sienta a la mesa’ manifestly promotes criminal organizations that can be traced back to the concept of ‘mafia’,

– the size and position of the word ‘mafia,’ associated with organized crime, which it is a priority objective of European and national institutions to combat (through specific legislation and investigative and repressive activities) dominates the mark in question,

– the full text of the word elements of that mark, moreover, conveys a message of conviviality. Thus trivializing and distorting a word distinguished by the tragic connotations attached to it,

– the EUIPO, as a body of the European Union, must maintain a strict stance in cases that transgress the basic principles and values of European society, so much so that it has the task of denying registration, for violation of public order, of any EU trademark that can be considered to support or profit a criminal organization,

– the contested mark therefore cannot come under EUIPO protection, regardless of the fact that the verbal element ‘mafia’ has often been used in literature and film, or in other EU trademarks.

Mafia Enough! The EU Tribunal’s pronouncement

‘La Mafia Franchises’ – now succeeded by the equally disgraceful business name ‘La Honorable Hermandad ‘ – filed an appeal with the EU Tribunal directed at the annulment of the EUIPO decision.

The EU General Court, in a ruling 15.3.18, dismisses the appeal brought by La Mafia Franchises and upholds the EUIPO decision. Statutory that the criminal activities invoked violate the very values on which the Union is founded.

The values of respect for human dignity and freedom-as set forth in Article 2 TEU and Articles 2, 3 and 6 of the Charter of Fundamental Rights of the European Union-constitute the spiritual and moral heritage of the EU and are therefore inviolable.

All the more so when one considers that the organized crime to which undue reference is made resorts to, among other things, intimidation, physical violence and murder in the exercise of its activities. In activities including drug and arms trafficking, money laundering and corruption. Particularly serious spheres of crime, posing a serious threat to security throughout the EU against which action is due.

The fact that ‘La Mafia Franchises’ intended to register the trademark ‘La Mafia se sienta a la mesa’ to allude to the Godfather series of films, not to shock or offend, is completely irrelevant in light of the above.

Such a label may therefore scandalize and offend not only the victims of this criminal organization and their families, but also any person on EU territory with ‘average thresholds of sensitivity and tolerance.

Mafia, Enough! Illegal, as well as in very bad taste.

Dario Dongo

Notes

(1) See judgment 15.3.18 EU General Court, Ninth Chamber, Case T-1/17. Italian text at http://curia.europa.eu/juris/document/document.jsf;jsessionid=9ea7d2dc30ddc78c954ae6d94f13a229d3df01cc8bda.e34KaxiLc3qMb40Rch0SaxyNbh50?text=&docid=200262&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=770049
(2) Idem c.s.
(3) Literally, ‘the honored brotherhood’. In the name of bad taste and connivance, at least ideal, with criminal organizations