The Honorable Hermandad, SL, which was succeeded by the appellant, La Mafia Franchises, SL, requested on November 30, 2006 the registration of the European Union trademark no. 
5510921 in classes 25, 35 and 43. The trademark had no objections or oppositions and was granted on December 20, 2007.
On July 23, 2015, the Italian Republic filed an action for annulment (Procedure 11247 C) invoking the application of the prohibition established in art. 7.1 f) of the Rto. No. 207/2009 (currently art. 7.1.f. of the Rto. No. 2017/1001) considering that this brand was contrary to public order as well as good customs.
This action was upheld by Decision dated March 3, 2016, leaving the trademark denied. In its Decision, the EUIPO concludes that the semantic content of the contested mark is deeply offensive to anyone in Europe with a normal level of sensitivity and tolerance. This offensive nature results from the fact that the brand message minimizes the threat of a criminal organization like The Mafia by turning it into someone to share the table with. This association together with the representation of a rose diminishes the negative meaning that The Mafia has (that is, they trivialize it), thus being offensive not only for the victims of The Mafia but also for those people who know the violent nature of this organization.
Faced with this Decision, La Mafia Franchises filed an appeal (Proceeding R 803/2016-1) which was dismissed by Decision of the First Board of Appeal dated October 27, 2016. The Board, on the basis that the EUIPO – in body of the Union - must take a strict position on matters that violate the basic principles and values of European society as well as the general principle that any brand that supports or benefits an organized criminal group, confirms the denial of registration of this trademark because, in its opinion, it clearly promotes and in large letters the name of the criminal organization Mafia, which the Italian Government combats through specific laws and enforcement measures. But what's more, the addition of the word group “sits at the table” distorts the gravity that The Mafia evokes by transmitting a message of cordiality and trivialization, turning it into a simple meeting around a table.
Esta Decision was appealed before the General Court (Case T-1/7) which has resolved the case by ruling of March 15, 2018. In its ruling, the TG considers It was correct that the Board of Appeal considered La Mafia as the dominant element of the contested mark and that said word element clearly evoked in the relevant public the name of a criminal organization responsible for particularly serious attacks on public order not only in Italy but in other States (particularly within the Union); being inconsequential whether the registration of the trademark was not intended to shock or offend, as well as the reputation acquired by the trademark alleged by the appellant.
But it's more, The TG shares the opinion of the EUIPO and the Italian Government that the inclusion of the phrase “sits at the table” in the mark evokes for the public knowledgeable in the Spanish language the idea of “sharing a meal” and, consequently, will lead to the association of the Mafia with the ideas of cordiality and relaxation, contributing to the trivialization of the illicit activities of said criminal organization.
In short, in paragraph 47 of the Judgment, the TG states “From the above it appears that the contested mark, seen as a whole, evokes a criminal organization, gives an overall positive image of said organization and, therefore, trivializes the serious attacks that such an organization perpetrates against the fundamental values of the Union mentioned. in the previous paragraph 36. The contested mark is, therefore, shocking or offensive not only for the victims of said criminal organization and their families, but also for any person who, in the territory of the Union, finds themselves in front of said mark and has average thresholds of sensitivity and tolerance".
This ruling is now subject to appeal before the Court of Justice.
Author Javier Ubeda-Romero
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