EUIPO confirms the “La Mafia” trademark nullity. The trademark used by several Restaurants and fast-food chains.

With its ruling of March 03/2016 the EUIPO (the European Union Intellectual Property Office responsible for managing the EU trade mark and the registered Community design) has declared the nullity of the Trademark N 005510921 claimed as “LA MAFIA SE SIENTA A LA MESA” and used to advertise some restaurants and fast-food chains. The EUIPO has justified the decision by affirming the LA MAFIA trademark was contrary to accepted principles of morality.

According to The Office judgment, followed after the Italian Ambassador in Spain call for the name to be changed, even if the word MAFIA is now widely used across the world and not necessarily in relation to the Italian criminal organization, it is still strictly linked to a negative connotation. As soon as such criminal organizations as Mafia continue to be a clear and actual menace to all the nations of the European Union, their bond to the extremely positive image of the Italian cuisine is inappropriate.

The positive outcome for the Italian claims is partially due to the Italian Anti-mafia Commission (Commissione Italiana Antimafia) support, that has provided EUIPO with relative documents and official reports by the Italian Anti-mafia Investigation Department (known as DIA). The reports performed by the the national anti-mafia authority, photographs of Capaci and D’Amelio carnage and FBI dossiers have also contributed to the outcome. The famous magazine Touring Club Italiano has removed from its guide the reference to the Mafia restauraunt in Valencia, Spain.

The case is considered to be of a higher importance and a victory for the Italian image protection and generally for the “Made in Italy” brand all over the world, even if the ruling is confined by the sole impossibility to register such trademark.

It is now EUIPO to deliver their ruling after the trademarks stockholders’ appeal and it is now up to the Italian Ambassador in Spain, as an official representative of the Italian Republic, to assess the next steps in order to gain a complete injunction of the trademark with the consequent name change of the existing restaurants and food-chains at least in Europe.