A declaration of invalidity for EU device mark with word element 'la mafia - se sienta a la mesa' for goods and services in Classes 25, 35 and Class 43 lodged by the Italian Republic was upheld by the Board of Appeal of the EUIPO and confirmed as contrary to public policy as set out in Article 7(1)(f) of Regulation No 207/2009, now Article 7(1)(f) of Regulation 2017/1001. The owner of the contested sign filed an appeal against this decision before the Court of First Instance.
The Court decided that when applying the absolute ground for refusal, it is necessary to take into account both public policy and principles of morality common to all member states of the EU and to the individual member states. The assessment for the existence of such a ground for refusal must be based on the standard of a reasonable person with average sensitivity and tolerance thresholds and cannot be limited to the public to which the goods and services are directly addressed, as such signs will also shock other people.
The Court further decided that the Board was right when it found that the word element 'la Mafia' was the dominant element in the contested device mark and that they rightly rejected the applicant's argument that the Mafia is not listed as a terrorist organisation, since the list of examples provided in the guidelines is not exhaustive.
The Board also rightly found that the word element 'la Mafia' in the contested mark would bring to mind the name of a criminal organisation responsible for particularly serious breaches of public policy. 'La Mafia' is understood worldwide as referring to a criminal organisation originating in Italy. Its criminal activities breach the very values on which the EU is founded and are a serious threat to the security and organisation of Italy and the EU.
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. The fact that the purpose of the registration of the contested mark is not to shock or offend, but to refer to the Godfather film series, as the applicant argued, does not alter the fact that the mark is perceived negatively. Also, no element of the trade mark directly refers to that series. The fact that there are many books and films on the subject of the Mafia does not change its bad reputation.
Finally, the Court found that linking the positive elements of a red rose (the symbol of love or a spirit of unity) and 'se sienta a la mesa' ('at the table') could lead to a trivialisation of the illegal activities of the criminal organisation and contrast with the violence that characterises the Mafia's activities.
The fact that there are other brands with the word element 'mafia' does not detract from this conclusion as the legality of decisions is based on EU law and not on the previous decision-making practice of the EUIPO or a national trade mark office.
The Court therefore confirmed the statement from the Board of Appeal calling for the EUIPO to take a firm stance in cases that transgress the basic principles and values of European society and to refuse to register, for breach of public policy, any trade mark that might be deemed to support or benefit a criminal organisation such as 'la Mafia'.
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Denys Bertels |
VOThe Hague
