The General Court of the European Union has concluded that a trademark applied for, ‘La Mafia se sienta a la mesa’, refers to a criminal organisation, conveys a globally positive image of that organisation and trivialises the serious harm done by that organisation to the fundamental values of the EU.
That mark was held as 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, and has been declared invalid.
The mark had originally been filed in 2006 by Spanish company La Honorable Hermandad (succeeded by La Mafia Franchises).
In 2015, Italy sucessfully filed an application with the European Union Intellectual Property Office (EUIPO) for a declaration that that mark was invalid, on the ground that it was contrary to public policy and to accepted principles of morality.
La Mafia Franchises subsequently brought an action seeking the annulment of that decision before the General Court.
The fact that the company intended to register the mark ‘La Mafia se sienta a la mesa’ with a view to alluding to the Godfather film series was irrrelevant to the negative perception of the mark by the public, the General Court stated.