Judgments nº T-1/17 of Tribunal General de la Unión Europea, March 15, 2018

• Resolution Date: March 15, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-1/17

(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))

In Case T-1/17,

La Mafia Franchises, SL, established in Zaragoza (Spain), represented by I. Sempere Massa, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Italian Republic, represented by G. Palmieri, acting as Agent, and by D. Del Gaizo, avvocato dello Stato,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 27 October 2016 (Case R 803/2016-1), relating to invalidity proceedings between the Italian Republic and La Mafia Franchises,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, L. Madise and R. da Silva Passos (Rapporteur), Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 2 January 2017,

having regard to the response of EUIPO lodged at the Court Registry on 7 April 2017,

having regard to the response of the Italian Republic lodged at the Court Registry on 6 April 2017,

further to the hearing on 22 November 2017,

gives the following

Judgment

Background to the dispute

1 On 30 November 2006, La Honorable Hermandad, SL, to which the applicant, La Mafia Franchises, SL is the successor, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the following figurative mark:

3 The goods and services in respect of which registration was sought are in Classes 25, 35 and 43 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- Class 25: ‘Footwear (except orthopaedic), clothing, T-shirts, caps’;

- Class 35: ‘Business management and organization consultancy services; business management assistance; Business management consultation; advisory services relating to business management; commercial management assistance in relation to franchises; advertisement services; issuing of franchises relating to the providing of food and drinks and cafés’;

- Class 43: ‘Services for providing food and drink, bars, cafeterias, cafés’.

4 The trade mark application was published in Community Trade Marks Bulletin No 24/2007 of 11 June 2007. The contested mark was registered on 20 December 2007 under No 5510921.

5 On 23 July 2015, the Italian Republic filed an application with EUIPO for a declaration that the contested mark was invalid in respect of all of the goods and services for which it had been registered.

6 The ground for invalidity relied on in support of that application was that set out in Article 7(1)(f) of Regulation No 207/2009 (now Article 7(1)(f) of Regulation 2017/1001). The Italian Republic maintained, in essence, that the contested mark was contrary to public policy and to accepted principles of morality, since the word element ‘Mafia’ referred to a criminal organisation and its use in the contested mark to designate the applicant’s restaurant chain, in addition to arousing deeply negative emotions, had the effect of ‘manipulating’ the positive image of Italian cuisine and trivialising the negative meaning of that element.

7 By decision of 3 March 2016, the Cancellation Division upheld the application for a declaration of invalidity.

8 On 29 April 2016, the applicant appealed against the decision of the Cancellation Division.

9 By decision of 27 October 2016 (‘the contested decision’), the First Board of Appeal of EUIPO confirmed that the contested mark was contrary to public policy and dismissed the appeal.

10 The Board of Appeal stated, by way of preliminary point, that the issue of whether the contested mark was contrary to public policy had to be assessed by reference to the perception of the relevant public within the territory of the European Union or part of that territory, as registration of an EU trade mark had to be cancelled if a ground for cancellation existed in only part of the European Union.

11 The Board of Appeal then went on to take the view that, having regard to its size and its position in the contested mark, the word element ‘la Mafia’ was the dominant element of that mark. The Board of Appeal emphasised that the Mafia was a criminal organisation combated by the Italian Government by means of legislation and specific measures. In addition, the Board of Appeal observed that combating organised crime was also a major objective of the institutions of the European Union. The Board of Appeal further stated that, as a body of the European Union, EUIPO was required to take a firm stance in cases which transgressed the basic principles and values of European society and must therefore refuse registration, for breach of public policy, of any EU trade mark that might be deemed to support or benefit a criminal organisation. Following that examination, the Board of Appeal considered that the contested mark manifestly promoted the criminal organisation known as the Mafia and that the full text of the word elements of the contested mark conveyed a message of conviviality and trivialised the word element ‘Mafia’, thereby distorting the serious connotations of that word.

12 Finally, the Board of Appeal confirmed that the contested mark should not be protected by EUIPO and that that conclusion could not be influenced either by the fact that the word element ‘Mafia’ is often used in literature and cinema or by the fact that other EU trade marks containing that same element had been registered by EUIPO.

Forms of order sought

13 The applicant claims that the Court should:

- annul the contested decision;

- declare the contested mark valid;

- order EUIPO to pay the costs.

14 EUIPO and the Italian Republic contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

Admissibility of evidence submitted for the first time before the General Court

15 EUIPO disputes the admissibility of Annexes A.7, A.8 and A.9 to the application, as well as the admissibility of images and links in paragraphs 44, 46 and 54 of that application, which redirect to websites. That evidence was not submitted at any stage of the proceedings before EUIPO.

16 In that regard, it should be pointed out that, having regard to the purpose of the action provided for in Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), it is not the Court’s function to review, in the context of such an action, the facts in the light of documents produced for the first time before it (see, to that effect, judgments of 24 November 2005, Sadas v OHIM - LTJ Diffusion (ARTHUR ET FELICIE), T-346/04, EU:T:2005:420, paragraph 19, and of 9 February 2017, International Gaming Projects v EUIPO - adp Gauselmann (TRIPLE EVOLUTION), T-82/16, not published, EU:T:2017:66, paragraph 16).

17 In the present case, and as the applicant acknowledged at the hearing, the evidence referred to in paragraph 15 above was submitted for the first time before the Court. That evidence must therefore be excluded as inadmissible, and there is no need to examine its probative value.

Substance

18 In support of its action, the applicant relies on a single plea alleging infringement of Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(f) of that regulation.

19 By that plea, first of all, the applicant argues that neither the organisation known as Mafia nor its members are included in the list of terrorist persons and groups in the Annex to Council Common Position 2001/931/CFSP of 27 December 2001 on the application of specific measures to combat terrorism (OJ 2001 L 344, p. 93), to which EUIPO’s examination guidelines refer for the purpose of illustrating the prohibition of registration of EU marks that are contrary to public policy under Article 7(1)(f) of Regulation No 207/2009.

20 Next, the applicant maintains that, according to EUIPO’s practice and the case-law, an EU trade mark must be analysed as a whole. The fact that the contested mark refers to the word element ‘Mafia’ is not sufficient to conclude that it is perceived by the average consumer as intending to promote or support that criminal organisation. On the contrary, the other elements that make up that mark rather imply that it is perceived as a type of parody or reference to the Godfather series of films

21 Moreover, the applicant argues that the goods and services covered by the contested mark are not ‘communicative’ services, that is to say, services, the purpose of which is to convey a message to others. Therefore, the contested mark was not registered in order to be insulting, shocking or abusive. The general public will understand, on the contrary, that the contested mark was registered in order to designate a restaurant chain, the theme of which does not refer to a criminal organisation, but to the Godfather series of films, and, in particular, to the values of family and fellowship portrayed in those films.

22 Last, the applicant maintains that many EU marks...