In a development that follows the precedent set by the 2018 judgment of the General Court of the European Union (GCEU) on the trade mark 'La Mafia se sienta en la mesa' (“The Mafia sits at the table”) , the Italian Embassy sent an open letter to the owner of the Leonese restaurant 'La camorra - pizza e pasta'. In the letter, the Italian ambassador in Spain, Giuseppe Buccino Grimaldi, requested that the owner’s restaurant remove any reference to the Neapolitan Camorra from its establishment.
The letter criticises the casualness with which some commercial establishments associate the names of criminal organisations with apparently innocent activities such as the preparation and sale of food. In particular, the Italian ambassador expresses his concern at the way in which the name of the Neapolitan Camorra, a well-known criminal organisation, is associated with the craft of pizzaioli which has been recognised by UNESCO as intangible cultural heritage.
Though it must be noted that the Leonese restaurant has not filed or obtained a trade mark for its controversial brand, the Italian’s ambassador request refers specifically to concerns previously expressed by the GCEU in its ruling on the "The Mafia sits at the table" trade mark. In that case (T-1/17), both the European Union Intellectual Property Office (EUIPO) and the GCEU found that the mark was contrary to public policy. The Court based its decision on the fact that the mark manifestly promotes the criminal organisation known as the Mafia and trivialises its illegal activities, considering that the word element "La Mafia" evokes in the whole world a criminal organisation that undermines fundamental values of the European Union.
This case highlights the complexity and lack of homogeneity in the assessment of trade marks that could be considered contrary to public policy. While the above case concerned the trade mark "La Mafia se sienta en la mesa", this case concerns the use of the expression "La camorra". While some, especially in Italy, find these trade marks distasteful – and contrary to public policy – others may disagree. In other words, whether a business uses a name or term that may be perceived as problematic, as in the cases mentioned above, and the decision as to whether it is contrary to public policy may vary from jurisdiction to jurisdiction.
There is today no clear and uniform guidance on what terms are acceptable, creating uncertainty for both business owners and judicial authorities. Each case may depend largely on the subjective interpretation of the terms in question. The EUIPN (the network of IP offices in Europe, including the national IP offices of member states and the EUIPO) is currently working on the drafting up of Common Practices in the topic, having started rounds of consultations in 2021 in order to limit these territorial and cultural differences when it comes to assessing the registrability of trade marks in light of public policy or principles of morality.
It is important to keep in mind that the GCEU decision referred to the protection through registration of controversial signs, not to the legality of the use of such signs in commerce which can be protected under free speech rules. But when it comes to protecting your brand, it is important to weigh up the possibility of falling into bad taste or being interpreted negatively in certain cultural contexts. This is a reminder of the need to evaluate the potential impact of a name across national borders, especially if you are interested in protecting the brand in different countries.