General Court confirms that ‘La Mafia se sienta a la mesa’ cannot be a trade mark on public policy grounds

Can ‘La Mafia se sienta a la mesa’ [‘se sienta a la mesa’ means ‘takes a seat at the table’] be registered as a figurative EU trade mark (EUTM) [see right] for a variety of goods and services in Classes 25, 35 and 43 of the Nice Agreement (including clothing and a restaurant chain) or would a registration of this kind be contrary to accepted principles of public policy and morality?

This morning the General Court (GC) held that the latter is the correct approach in its decision in La Mafia Franchises v EUIPO, T-1/17.

Background

In 2006 an application for registration of the ‘La Mafia se sienta a la mesa’ in the Nice classes above was filed, and the trade mark was registered in 2007.

In 2015 Italy filed an application with the EUIPO for a declaration that the contested mark was invalid in respect of all of the goods and services for which it had been registered. According to the Italian Republic this mark was contrary to what is now Article 7(1)(f) of Regulation 2017/1001 (public policy or accepted principles of morality).

Italy submitted that the word element ‘Mafia’ refers to a criminal organisation and its use in the contested mark to designate a restaurant chain would: (1) evoke deeply negative emotions; (2) impair the positive image of Italian cuisine; and (3) trivialise this criminal organisation.

In 2016 both EUIPO Cancellation Division and the First Board of Appeal of EUIPO sided with Italy and declared the trade mark invalid.

La Mafia Franchises thus appealed the decision to the GC, but without success.

Today’s decision

Arguments of La Mafia Franchises

In support of its action La Mafia Franchises maintained the view that:

•      First, neither the organisation known as Mafia nor its members are included in the list of terrorist persons and groups in the Annex to Council Common Position on the application of specific measures to combat terrorism, to which EUIPO’s examination guidelines refer for the purpose of illustrating the prohibition of registration of EU marks that are contrary to public policy.
•      Secondly, the fact that the mark refers to the word element ‘Mafia’ is not sufficient to conclude that it is perceived by the average consumer as intending to promote or support that criminal organisation. On the contrary, the other elements that make up that mark rather imply that it is perceived as a type of parody or reference to the Godfather series of films.
•      Thirdly, the goods and services covered by the mark are not ‘communicative’ services. It would follow that the mark was not registered to be insulting, shocking or abusive.
•       Finally, there are many EU and Italian trade marks registered that include the word ‘mafia’. 

The applicant submitted that
the mark intended to evoke The Godfather

Assessment of public policy/morality

The GC began its analysis by outlining the rationale of and test for assessing the absolute ground for refusal based on public policy/morality. In this sense, the analysis should be undertaken from the point of view of ‘a reasonable person with average sensitivity and tolerance thresholds’, and should not be limited to the public to which the goods and services in respect of which registration is sought are directly addressed. Rather, it should include also those consumers that may encounter the sign incidentally. Finally, it should be borne in mind that the perception of a sign as contrary to public policy or morality may not be the same across the EU, also due to linguistic, historic, social, and cultural reasons.

It follows that the assessment to undertake is one that takes account of both the circumstances common to all EU Member States and those that are relevant in individual Member States.

Application

The GC confirmed the conclusion of the Board of Appeal that the word element ‘La Mafia’ dominates the composite sign.

In addition, it found the argument that Mafia is not listed in the group of terrorist persons and groups irrelevant: first, the purpose of that list is not to set out the subjects involved in criminal activities other than terrorism; secondly, the list is any case a non-exhaustive one.

This said, the GC noted that the word element ‘la Mafia’ is understood world-wide as referring to a criminal organisation originating in Italy, whose activities extend beyond the Italian territory. Mafia usually resorts to intimidation, physical violence and murder in carrying out its activities, which include, inter alia, drug trafficking, arms trafficking, money laundering and corruption.

The Slants (Matal v Tam)

According to the GC such criminal activities breach the very values on which the EU is founded, in particular the values of respect for human dignity and freedom as laid down in Article 2 TEU and Articles 2, 3 and 6 of the EU Charter of Fundamental Rights. The word element ‘la Mafia’ has also deeply negative connotations in Italy.

The Court rejected the argument that the purpose of the registration of the contested mark is not to shock or offend, but rather only to allude to the Godfather film series. When a sign is particularly offensive or shocking, it must be judged in its isolation: the purpose only to allude to the Godfather film series (which, by the way, is not clearly referred to in the sign) – as advanced by the applicant – is irrelevant to the negative perception of the mark by the relevant public. The Court stressed that “[t]he 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 mark, by using a rose and the phrase ‘se sienta a la mesa’, conveys the idea of conviviality and relaxation: this, according to the GC, trivialises the illicit activities of the criminal organisation. Hence:

“the contested mark, considered as a whole, refers to a criminal organisation, conveys a globally positive image of that organisation and, therefore, trivialises the serious harm done by that organisation to the fundamental values of the European Union … 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.” [para 47]

One of the ads at stake in Sekmadienis

The GC therefore upheld the decision of the Board of Appeal, also deeming it irrelevant the argument that there are other registered trade marks containing the word ‘mafia’.

Comment

The interplay between trade mark protection and accepted principles of public policy and morality is not new, but what may be interesting to note is the seemingly different approaches to acceptable levels of ‘contrariety to public policy’ or ‘immorality’.

It may be worth recalling that only recently we have had the free speech-rooted decision of the US Supreme Court in Matal v Tam and – albeit in the different context of advertising – the freedom of expression-rooted decision of the European Court of Human Rights (ECtHR) in Sekmadienis v Lithuania (Appl No 69317/14) [Katpost here]. Possibly in contrast with the outcome of those cases are recent decisions at the EUIPO and GC levels: beside today’s judgment in La Mafia, one can for instance recall that not long time ago the GC confirmed that the sign ‘Fack Ju Göhte’ cannot be registered as trade mark [here].

Finally, if we look at these cases, it may be also worth highlighting that, while both the ECtHR in Sekmadienis and the GC in La Mafia relied upon fundamental rights – whether those in the European Convention or the EU Charter – the outcome of the balancing exercise was different, this being possibly proof of the fact that this operation may be anything but straightforward.

[Originally published on The IPKat on 15 March 2018]