“Revenge is a dish that tastes best when served cold.” This phrase is one of the most famous quotes from the novel, “The Godfather” by Mario Puzo. A chain of Pizzerias named “The Mafia” serve delicious melt in your mouth straight from the oven with cold white wine pizza, however the taste of the pizza cannot convince the EU judges that the mark used by the chain “La Mafia se sienta a la mesa” (which translates to “the Mafia’s at the table” in Spanish) has no connection to organized crime but rather should be associated with Italian cuisine. (Something akin to a family feasting around the table filled with delicious Italian dishes similar to the Mario Puza novel and the famous film by Francis Ford Copola.) Rather, EU judges failed to see the funny side of branding a chain of pizzerias as “The Mafia”, rejecting an appeal by a Spanish company to keep European trademark protection for the mentioned trademark.
People all over the world is fascinated by real-life and fictional mafiosos since the 1920s. Films like “The Untouchables” (1987), “Donnie Brasco” (1997) and especially Martin Scorsese’s “Goodfellas” (1990), which showed the underside of “The Godfather’s” romanticized vision of Mafia life. Mafiosos also made their way into comedies: “Prizzi’s Honor” (1985), “Married to the Mob” (1988), “My Blue Heaven” (1990) and “Analyze This” (1999). From animated films to children’s cartoons, video games to “gangsta”-style hip-hop or rap music, the myth of the Mafia is everywhere, thanks in large part to the enduring legacy of “The Godfather.” On TV, of course, mobsters turned up regularly on crime shows like “NYPD Blue” and “Law and Order.”
It is evident the mafia fascinates people all over the word and does not necessarily have to be related to crime, violence, and pain. To me, it seems that we should separate “the mafia” that is presented in films, music, video games, animated films for children and connected to food from “the mafia” as a criminal organization engaged in smuggling, racketeering, trafficking in narcotics, and other criminal activities.
In this case, the Spanish pizzeria chain purpose of the registration reflected the mentioned presence of the mafia in worldwide pop culture. The company claimed that their intention is not to shock or offend, but only to allude to the Godfather film series.
However, the EU judges believe the Spanish pizzeria’s chain purpose is irrelevant to the negative perception of the mark by the relevant public. Simultaneously, the EUIPO stressed that no element of the contested mark directly refers to that film series.
EU judges consider that it is immoral to trade on the name of a “criminal organization” whose “activities breach the very values on which the EU is founded”. According to the EU judgment, the dominant element of the mark is the word “mafia” which is understood world-wide as referring to a criminal organization carrying out criminal activities which breach the very values on which the EU is founded, in particular, the values of respect for human dignity and freedom. Additionally, the mafia values and activity constitute in the opinion of EU judges a serious threat to security in Europe.
In the opinion of the General Court the mark does not comply with The EU trademark rules because the dominant element of the mark associated with the slogan “La Mafia se sienta a la mesa” (“The Mafia’s at the table”) used in conjunction with a red rose conveys a globally positive image of the Mafia’s activities and trivialises the perception of the criminal activities of that organization.
After the lecture of the EU judgment the question comes – as we are seating in the Italian restaurant waiting for our pizzas do we have rather in front of our eyes the scenes from Connie`s Weeding from the film Godfather with traditional music, cheerful guests, dance and rich tables or rather crime and sufferance.
Marta Wyszkowska is an Intellectual Property Junior Associate based in the Warsaw. She graduated in law (Hons), Polish and French Philology from the University of Warsaw. She also hold a PhD degree in comparative literature. Marta is fluent in Polish, French and English. She also speaks Italian.