Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 18/06/2018

MERKENBUREAU KNIJFF & PARTNERS B.V.

P.O. Box 5054

NL-1380 GB Weesp

PAÍSES BAJOS

Application No:	017518424
Your reference:	ERS/TM89792EU00
Trade mark:	SWEDISH HOUSE MAFIA
Mark type:	Word mark
Applicant:	SSA MERCHANDISE LTD 4th Floor East Wing, Chancery House, 53-64 Chancery Lane Londen WC2A 1QS REINO UNIDO

The Office raised an objection on 19/12/2017 pursuant to Article 7(1)(f) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is not eligible for registration for the reasons set out in the attached letter.

The applicant submitted its observations on 17/04/2018, which may be summarised as follows:

1. The applicant is aware of the General Court case ‘La Mafia franchises’ but considers this a different matter.

2. The trademark is for a Merchandise entity of a hugely popular music act and the Italian public will understand the words ‘House’ and ‘Swedish’.

3. The trade mark is not offensive as a whole.

4. Comparable marks have been accepted previously.

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 on the basis that the application does not comply with Article 7(1) EUTMR to the extent that ‘trade marks which are contrary to public policy or to accepted principles of morality’ shall not be registered. The reasons are explained hereunder.

The sign at issue is the word mark ‘SWEDISH HOUSE MAFIA’ and it is applied for the following goods and services:

Class 09 Apparatus for recording, transmission, or reproduction of sound or images;

Magnetic data carriers, recording discs; Compacts discs; Interactive compacts discs (CD-Is); Long-playing records (LPs), tapes, cassettes, videotapes, audio players and audio equipment; Apps (software); Computer software; Headphones; Loudspeakers; Audio apparatus; Microphones; Spectacles(optics), sunglasses; musical sound recordings; Audiovisual recordings, namely compact discs and downloadable MP3 files; Digital data carriers; USB flash drives; Record players; smart phone shell.

Class 25 Clothing, namely shirts, shorts, jeans, skirts, dresses, sweaters, waistcoats,

blouses, suit coats, jackets; Headgear, namely caps and hats; Footwear.

Class 41 Services of disc jockeys, artists and dancers; Organization and performing of music, dance and entertainment shows and events (impresario services); Organization of parties, publishing and distributing books, newspapers and magazines; Recording services; Organization of dance parties; Publishing of books, newspapers and magazines; Production and compiling of music; Music publishing, including running a record label; Artists' services, services of a record company, namely recording and publishing music; Night clubs; services of discotheques.

Article 7(1)(f) EUTMR excludes from registration trade marks that are contrary to public policy or to accepted principles of morality. The rationale of Article 7(1)(f) EUTMR is to preclude trade marks from registration where granting a monopoly would contravene the state of law or would be perceived by the relevant public as going directly against the basic moral norms of society. The Office considers that ‘public policy’ and ‘accepted principles of morality’ are two different concepts, which often overlap.

As previously mentioned in the Notice of Refusal of 19/12/2017, the word ‘MAFIA’, which is part of the mark applied for, will be linked, by at least, but not necessarily only, the Italian-speaking consumers in the European Union, to an infamous criminal organisation involved in illegal activities.

As already pointed out, the goods covered by the mark applied for are mass consumption goods which are mainly aimed at an average consumer. They are readily and freely accessible. In the light of the nature of the goods in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

1. Firstly, the applicant points out that he is aware of the General Court case ‘La Mafia franchises’ but considers this a different matter.

As to the applicant’s argument regarding the General Court case against ‘La Mafia franchises’ and 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 this 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 (15/03/2018, T-1/17, ‘La Mafia SE SIENTA A LA MESA’, EU:T:2018:146, § 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 of the Treaty of the European Union 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 of the Treaty on the Functioning of the European Union. 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 (15/03/2018, T-1/17, ‘La Mafia SE SIENTA A LA MESA’, EU:T:2018:146, § 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 (15/03/2018, T-1/17, ‘La Mafia SE SIENTA A LA MESA’, EU:T:2018:146V, § 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.

2. The trademark is for a Merchandise entity of a hugely popular music act and the targeted consumers will understand the words ‘House’ and ‘Swedish’.

The applicant argues that the goods and services applied for are all for the type of music referred to as House music or Electronic Dance music and that the targeted consumers are clearly aware of the meaning of the words ‘House’ and ‘Swedish’ and that this type of music is immensely popular in Italy. The applicant believes that the public at large will understand the two possible meanings of the word ‘House’ ie. ‘House Music’ or the basic English meaning of the word referring as ‘Home’.

In this regards it should be noted that 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 (05/10/2011, ‘PAKI’, T-526/09, EU:T:2011:564, § 15). Moreover, it follows from a combined reading of the various subparagraphs of Article 7(1) of the Regulation 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 (13/09/2005, T-140/02 ‘Intertops’ EU:T:2005:312, §28).

The Office might agree that the Italian public will understand the words ‘House’ and ‘Swedish’ but finds that the word ‘Mafia’ is the dominant word of the sign.

As already pointed out in our Notice of refusal of 19/12/2017, the fact that goods in class 09 are for entertainment or recreational purposes and the goods in Class 25, which can be used or worn everyday in plain eyesight, is particularly relevant. It is also because of this reason that the banalization of the crimes committed by the Mafia is patent. Goods in Class 09 and goods in Class 25, which are mostly directed at teenagers and young people for the sake of entertainment, cannot be linked to a sadly long history of violence and crimes. Doing so is certainly offensive, as already explained, not only to Italian citizens but also to any person in Europe with a normal level of sensitivity and tolerance.

Thus, the fact that the applicant is engaged in musical recording apparatus and related goods, clothing, footwear and headgear as merchandising products and entertainment services is irrelevant to the negative perception of the mark by the relevant public.

3. The trademark is not offensive as a whole.

The applicant argues that the trademark is not offensive and that the point of view should be taken from a ‘reasonable person with average sensitivity and tolerance thresholds’. He also claims that Swedish people are often seen as friendly, loving people who are not criminal or aggressive in any way.

The Office does not take a position in whether or not the Swedish people are not considered criminal or aggressive in any way but takes into account that part of the relevant public, which are the Italian consumers, and that not only exclusively for them, the banalization and the association to a trade mark of one of the most dangerous and brutal criminal organizations which ever existed in Italy, if not in the world, is clearly offensive.

This is valid not only for the thousands of victims of crimes perpetrated by Mafia organisations, but also in the eyes of persons who are aware of the violent character of those Mafia organisations. The fact that in other countries of Europe the concept of ‘Mafia’ has been rendered, to a certain extent, banal, does not mean that in the part of it, i.e. Italy, where this criminal phenomenon has caused more damages and sufferance, its use would not be considered against the basic moral norms of society.

In its judgment of 20/09/2011, T-232/10, ‘Soviet Coat of Arms’ EU:T:2011:498, § 34, the General Court held that the concepts of ‘public policy’ and ‘acceptable principles of morality’ must be interpreted not only with reference to the circumstances common to all Member States but by taking into account ‘the particular circumstances of individual Member States which are likely to influence the perception of the relevant public within those States’

4. Comparable trade marks such as ‘SWEDISH HOUSE MAFIA’ (in UK & EUIPO), ‘DAB MAFIA 710’ and ‘MAFIA HEAVEN’ have been accepted previously.

The applicant cannot successfully rely on the registration of the words ‘SWEDISH HOUSE MAFIA’, as a trade mark in the United Kingdom.  The circumstances which led to the acceptance of UK Registration No UK00003281090 cannot be subject of the objections in the present proceedings nor do they represent valid arguments in order to overcome the grounds for refusal under Art. 7(1)(f) EUTMR.

As regards to previously accepted EUTMs ‘SWEDISH HOUSE MAFIA’ and ‘DAB MAFIA 710’ and according to the case law, it follows from the principles of legality and of sound administration that the examination of applications for trade mark registrations has to be stringent and exhaustive. Furthermore, the decisions of the Office are not of a discretionary nature but have to comply with the principle of legality (22/05/2012, T-179/11, ‘Seven Summits’, EU:T:2012:254). Therefore, the applicant cannot rely on the principle of equality taken together with previous possibly unlawful decisions of the Office to claim the registration of a trade mark which does not comply with the requirements established by the EUTMR.

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’ (27/02/2002, T‑106/00, ‘STREAMSERVE’, EU:T:2002:43, §67). This is no different where it concerns the applicant itself. The assessment of absolute grounds for refusal has to be made on a case by case basis and it is the fundamental duty of the examiner to attempt to apply the law correctly in each case, i.e. a proper reading of Article 7(1) EUTMR, as interpreted by the European judicature.

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 European Union 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 European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, ‘BioID’, EU:C:2005:547, § 47 and 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, EU:T:2002:245, §35).

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 (21/10/2004, C-64/02P ‘Erpo Möbelwerk’, EU:C:2004:645 § 45, and 09/09/2010, C-265/09 P. BORCO-Marken-Import Matthiesen EU:C:2010:508, § 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 (12/02/2004, C-218/01 ‘Henkel’, ECR I-1725, § 62).

Also, in regards of previously accepted EUTM ‘MAFIA HEAVEN’ it should be noted that the words on the representation say ‘MAFA HEAVEN’. The assumed letter is only a picture of a trident that could be interpreted as a letter ‘I’. The verbal elements merely read ‘Mafia Heaven’ for ease of use for search purposes but do not have any scope of protection for ‘Mafia Heaven’.

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 the Regulations 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.

In view of the abovementioned and pursuant to Article 7(1)(f) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 017518424 is hereby rejected for all the goods and 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.

Maureen FELLEMANS