The “Mafia se sienta a la mesa” has been stripped of its Trademark
The well-known restaurant “La Mafia se sienta a la mesa” identified with this expression- meaning -the Mafia sits down to eat- together with a red rose on a black background, has just forfeited its EU trademark following a decision by the GCEU in an invalidity procedure filed by the Italian Republic, which considered that the trademark was contrary to public policy and accepted principles of morality. We should recall that this is one of the grounds for invalidity specified in trademark article 7 (f) of the Regulation on the European Union Trademark.
Despite registering the aforementioned trademark in 2007, it was not until 2015 that the Italian Republic filed an invalidity action at the EUIPO alleging that the term “Mafia” refers to a criminal organisation which has deeply negative connotations and to some extent “manipulates” the positive image of Italian cuisine and trivialises the negative meaning of the term “mafia”.
Both the Appeals Chamber of the EUIPO which cancelled the Trademark and the GCEU considered that the EUIPO, as a European Union institution, is required to refuse registration of any EU trademark which could be held to support and benefit a criminal organisation, in order to safeguard the basic principles and values of European society.
What was the trademark owner’s defence? Firstly, the “Mafia” does not figure in any lists of terrorist groups or persons, as referred to in the EUIPO guidelines; secondly, the trademark overall is perceived by consumers as a parody or reference to the films in the Godfather saga, and not as any support for that criminal organisation, conveying rather the family values and corporatisation integral to the aforementioned films; and finally, citing the existence of European Union and Italian trademarks that contain the term “mafia”.
The GCEU has indicated that “the word element ‘la Mafia’ is understood world-wide as referring to a criminal organisation originating in Italy, (…) and that criminal organisation resorts to intimidation, physical violence and murder in carrying out its activities, which include, inter alia, drug trafficking, arms trafficking, money laundering and corruption.” These criminal activities breach the values of respect for human dignity and freedom and the term “mafia” is perceived as extremely negative particularly in Italy. Thus, the registered trademark could lead to association with the ideas of conviviality and relaxation conveyed by the idea of sharing a meal which plays a part in trivialising the illicit activities of that criminal organisation. As a result, the GCEU has declared the invalidity of the trademark “la Mafia se sienta a la mesa”. Whether the chain of restaurants will appeal to the CJEU or decide to change its branding strategy remains to be seen.
Garrigues Intellectual Property Department