The government of Italy brought the action at issue, contending that protection of the name La Mafia se Sienta a la Mesa contravenes public policy as well as accepted principles of morality.
Based in Zaragoza, Spain, La Mafia se Sienta a la Mesa had registered its name in 2006 with the European Union Intellectual Property Office.
The name translates to The Mafia Sits at the Table, a phrase that Italy accused of manipulating the image of Italian cuisine to trivialize organized crime.
After failing to defend its mark before the trademark board, La Mafia took its appeal to the European General Court in Luxembourg.
Though the company pointed to films like “The Godfather” and other references to the Mafia that permeate the public sphere, it failed Thursday to persuade the court that its name should be protected.
“It is common for literary or cinematographic fiction to shock or offend the public or part of the public by the use and portrayal of the subjects they address,” the ruling states. “The fact that there are many books and films on the subject of the Mafia in no way alters the perception of the harm done by that organization.”
La Mafia also failed to demonstrate that its name is not a reference to the criminal organization itself but the beloved films directed by Francis Ford Coppola.
“The fact that the purpose of the registration of the contested mark is not to shock or offend, but only to allude to ‘The Godfather’ film series, is irrelevant to the negative perception of the mark by the relevant public,” the ruling states. “Moreover, no element of the contested mark directly refers to that film series.
“Secondly, the reputation acquired by the contested mark and the concept of the applicant’s theme restaurants, connected to ‘The Godfather’ film series, are not intrinsic qualities of the contested mark and are therefore also irrelevant for the purpose of assessing whether the contested mark is contrary to public policy,” the ruling continues.
Later the ruling contrasts the red rose in La Mafia’s mark with the sentence “se sienta a la mesa.”
Since the public might understand that phrase as referring to the idea of sharing a meal, the court said that “the ideas of conviviality and relaxation conveyed by the idea of sharing a meal plays a part in trivializing the illicit activities of that criminal organization.”
The ruling emphasizes that the phrase “‘la Mafia’ is understood worldwide as referring to a criminal organization originating in Italy, whose activities extend to states other than the Italian Republic, inter alia within the European Union.”
“It must also be noted … that that criminal organization resorts to intimidation, physical violence and murder in carrying out its activities, which include, inter alia, drug trafficking, arms trafficking, money laundering and corruption,” the ruling continues.
Citing values that “make up the spiritual and moral heritage of the European Union,” the court also noted that the crimes associated with the mafia have drawn considerable efforts both by the Italian government and cross-border divisions of law enforcement.
“‘La Mafia’ has deeply negative connotations in Italy, on account of the serious harm done by that criminal organization to the security of that Member State,” the ruling continues.