General Court (Ninth Chamber) 15 March 2018,  in case T‑1/17 (La Mafia Franchises, SL v EUIPO Italian Republic)

EU trade mark — Invalidity proceedings — EU figurative mark La Mafia SE SIENTA A LA MESA — Absolute ground for refusal — Whether contrary to public policy or to accepted principles of morality — Article 7(1)(f) of Regulation (EC) No 207/2009 (now Article 7(1)(f) of Regulation (EU) 2017/1001)

The public interest underlying the absolute ground for refusal laid down in Article 7(1)(f) of Regulation No 207/2009 is to ensure that signs which, when used in the European Union, would be contrary to public policy or to accepted principles of morality are not registered. The registration of a mark as an EU mark is caught by that absolute ground for refusal if, inter alia, it is deeply offensive. The word element ‘la Mafia’ is understood world-wide as referring to a criminal organisation originating in Italy, whose activities extend to States other than the Italian Republic, inter alia within the European Union. 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.

Such criminal activities breach the very values on which the European Union 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 Charter of Fundamental Rights of the European Union. Those values are indivisible and make up the spiritual and moral heritage of the European Union. Moreover, organised crime and the activities referred to above are some of the areas of particularly serious crime with a cross-border dimension in which the EU legislature may intervene. Thus considerable efforts have been made and many resources are devoted to combating the Mafia, not only by the Italian Government, but also at EU level, since organised crime is a serious threat to security throughout the European Union.

The word element ‘la Mafia’ has deeply negative connotations in Italy, on account of the serious harm done by that criminal organisation to the security of that Member State. The importance of combating the Mafia in Italy is illustrated by the provisions of criminal law in force in that Member State specifically targeting membership or support of that organisation, The importance of combating the Mafia in Italy is moreover confirmed by the existence in Italy of several public institutions specifically tasked with investigating and prosecuting the Mafia’s illicit activities as well as of private associations dedicated to helping the victims of that organisation.

It follows from the foregoing that 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.

categoria:European Case Law