Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 03/05/2018

UAB "BRAINERA"

Savanorių pr. 217

LT-02300 Vilnius

LITUANIA

Application No:	017542218
Your reference:	bra1711
Trade mark:	MAFIA RAVE
Mark type:	Figurative mark
Applicant:	Sofiya Golovko street V.Shuma, house 6?, apartment 19 Odessa area, city Chernomorsk 68004 UCRANIA

The Office raised an objection on 03/01/2018 pursuant to Article 7(1)(f) and Article 7(2) because it found that the trade mark applied for is contrary to public policy and to accepted principles of morality, for the reasons set out in the attached letter.

The applicant submitted its observations on 02/03/2018, which may be summarised as follows:

1. The mark is a composite one. Visually there are three elements that immediately catch the eye: two words and the figure of a dancing lady between the words. Due to artistic features the slim silhouette of a dancing woman immediately attracts attention and is easily remembered. There is no reason to disregard two elements of the whole mark and motivate the refusal on a possible meaning of only one element.

2. The first word ‘MAFIA’ has two meanings. It should be noted that the word in the first (criminal organization) meaning in Italian is always used with the article “la” while in English with “the”. Definitely the second meaning of ‘a group of people sharing interests and helping each other’ is easily compatible with the meaning of the word ‘RAVE’ and the picture of a dancing lady. Therefore, the meaning of the mark can only be interpreted as a close group of people sharing interest in dancing.

3. The meaning of the phrase has nothing to do with the Italian criminal organization when the services are taken into account. The relevant public will perceive the sign as provocative, transgressive, rebellious, but not as an indicator of criminal origin of the services or criminal link to La Mafia or the Mafia. Neither will the consumer perceive it as a promotion of the Mafia.

4. Registration of marks consisting of only one word ‘MAFIA’ or ‘ETA’ is normally rejected because they will be associated with criminal organizations. However, when marks contain other elements such elements may totally change the overall perception of the mark. In the present case, the main word in the phrase is ‘RAVE’. The figure of a dancing lady semantically reinforces the meaning of the second word. Due to the meaning of the second word the whole phrase does not create any associations with a criminal organization.

5. The Office has already registered other marks containing the word ‘MAFIA’ in combination with other words.

Pursuant to Article 94 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

First of all, the Offices notes that the list of goods and services was amended as follows:

Class 41 Education; providing of training; Entertainment; Sporting and cultural activities; Creation and providing of training, courses and workshops; Education, training, coaching of (starting) models for film and photography, actors and influencers provided by a modeling agency; Counseling on the career development of models for film and photography, actors and influencers; Consultancy relating to training in respect of models for film and photography, actors and influencers; Consultancy relating to education in respect of models for film and photography, actors and influencers in the fashion, advertising and media sectors; Modeling services for film and photography; Making of audiovisual productions; Taking photographs and photo- and film-reportages of models for film and photography, actors and influencers; Taking photographs and photo- and film reportages; Organization of photo and film sessions; Productional work on photo and film shoots; organization and production of cultural events, entertainment shows, fashion events, model competitions or (model) talent scouting.

Therefore, the following examination will be based on the amended list.

1. As regards the composition of the sign, the Office finds that the word element ‘MAFIA’, on account of its size and being the first word in a phrase of the contested mark, is a dominant element. The other word element ‘RAVE’ is a secondary word. The figure of a dancing lady between the words also occupies a secondary position due to its small size. Moreover, as the figure of a lady separates the two words, it makes the word ‘MAFIA’ stand out in the mark.

2. As regards the meaning of the term ‘MAFIA’, the Court has stated that the word element ‘la Mafia’ is understood world-wide as referring to a criminal organisation 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 organisation resorts to intimidation, physical violence and murder in carrying out its activities, which include, inter alia, drug trafficking, arms trafficking, money laundering and corruption (see judgement of the General Court, 15 March 2018, Case T-1/17, La Mafia SE SIENTA A LA MESA, paragraph 35).

The Court took the view that such criminal activities breach the very values on which the European Union is founded, in particular the values of respect for human dignity and freedom as laid down in Article 2 TEU and Articles 2, 3 and 6 of the Charter of Fundamental Rights of the European Union. Those values are indivisible and make up the spiritual and moral heritage of the European Union. Moreover, organised crime and the activities are some of the areas of particularly serious crime with a crossborder dimension in which the EU legislature may intervene, as provided for in Article 83 TFEU. Thus, considerable efforts have been made and many resources are devoted to combating the Mafia, not only by the Italian Government, but also at EU level, since organised crime is a serious threat to security throughout the European Union (see judgement of the General Court, 15 March 2018, Case T-1/17, La Mafia SE SIENTA A LA MESA, paragraph 36).

Last, the word element ‘la Mafia’ has deeply negative connotations in Italy, on account of the serious harm done by that criminal organisation to the security of that Member State. The importance of combating the Mafia in Italy is illustrated by the provisions of criminal law in force in that Member State, to which EUIPO and the Italian Republic refer, specifically targeting membership or support of that organisation. The importance of combating the Mafia in Italy is moreover confirmed by the existence in Italy of several public institutions specifically tasked with investigating and prosecuting the Mafia’s illicit activities as well as of private associations dedicated to helping the victims of that organisation (see judgement of the General Court, 15 March 2018, Case T-1/17, La Mafia SE SIENTA A LA MESA, paragraph 37).

Therefore, the word element ‘MAFIA’ in the contested mark would manifestly bring to mind, for the relevant public, the name of a criminal organisation responsible for particularly serious breaches of public policy.

The fact that the word ‘MAFIA’ is being used without the article ‘la’ or ‘the’ does not alter the perception of the relevant public.

Moreover, for the mark to be interpreted as a close group of people sharing interest in dancing, the phrase should be ‘RAVE MAFIA’ and not ‘MAFIA RAVE’.

3. The applicant argues that the meaning of the phrase has nothing to do with the Italian criminal organization when the services are taken into account. In that regard, it should first be emphasised that, when a sign is particularly shocking or offensive, it must be regarded as being contrary to public policy or to accepted principles of morality, irrespective of the goods and services for which it is registered (see, to that effect, judgment of 5 October 2011, PAKI, T-526/09, not published, EU:T:2011:564, paragraph 15). Moreover, it follows from a combined reading of the various subparagraphs of Article 7(1) of Regulation No 207/2009 (now Article 7(1) of Regulation 2017/1001) that they refer to the intrinsic qualities of the mark in question and not to circumstances relating to the conduct of the person applying for the trade mark (judgments of 9 April 2003, Durferrit v OHIM — Kolene (NU–TRIDE), T-224/01, EU:T:2003:107, paragraph 76, and of 13 September 2005, Sportwetten v OHIM — Intertops Sportwetten (INTERTOPS), T-140/02, EU:T:2005:312, paragraph 28).

Thus, the fact that the applicant is engaged in model school activities, is irrelevant to the negative perception of the mark by the relevant public.

4. The holder argues that due to the meaning of the second word the whole phrase does not create any associations with a criminal organization. The Office, however, shares a different opinion.

The term ‘RAVE’ in English informal language has the meaning of a ‘party’. Therefore, the phrase ‘MAFIA RAVE’ may be perceived by a large part of the public who understands that phrase as referring to the idea of a lively party or gathering involving dancing and drinking which is organised for the Mafia members. This idea is reinforced by the figurative element representing the silhouette of a model/woman. Thus, the association of the Mafia with the ideas of entertainment and relaxation plays a part in trivialising the illicit activities of that criminal organisation. Therefore, the association of the word element ‘MAFIA’ with the other elements of the contested mark is such as to convey a globally positive image of the Mafia’s activities and, so doing, to trivialise the perception of the criminal activities of that organisation.

It follows from the foregoing that the contested mark, considered as a whole, refers to a criminal organisation, conveys a globally positive image of that organisation and, therefore, trivialises the serious harm done by that organisation to the fundamental values of the European Union. The contested mark is therefore likely to shock or offend not only the victims of that criminal organisation and their families, but also any person who, on EU territory, encounters that mark and has average sensitivity and tolerance thresholds ((see judgement of the General Court, 15 March 2018, Case T-1/17, La Mafia SE SIENTA A LA MESA, paragraph 47).

5. As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a Community trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a Community trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered (EUIPO v Erpo Möbelwerk, paragraph 45, and EUIPO v BORCO-Marken-Import Matthiesen, paragraph 45). That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, as regards Article 3 of Directive 89/104, Case C-218/01 Henkel [2004] ECR I-1725, paragraph 62).

In the present case, it has become apparent that, contrary to what may have been the position with regard to certain earlier applications for the registration as trade marks of signs containing the term ‘MAFIA’, the present application was caught by grounds for refusal set out in Article 7(1) of Regulation No 40/94 because of the services in respect of which registration was sought and because of the way in which the sign would be perceived by the relevant class of persons.

For the abovementioned reasons, and pursuant to Article 7(1)(f) and Article 7(2) EUTMR, the application for the European Union trade mark No 17542218 is hereby rejected for all the services claimed.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Julija SIRVINSKIENE