{"id":12962,"date":"2026-03-17T09:15:07","date_gmt":"2026-03-17T08:15:07","guid":{"rendered":"https:\/\/blogip.garrigues.com\/?p=12962"},"modified":"2026-03-16T18:19:22","modified_gmt":"2026-03-16T17:19:22","slug":"the-mafia-no-longer-has-a-seat-at-the-table-the-oepm-follows-in-the-egcs-footsteps-and-invalidates-the-spanish-trademark","status":"publish","type":"post","link":"https:\/\/blogip.garrigues.com\/en\/trademarks\/the-mafia-no-longer-has-a-seat-at-the-table-the-oepm-follows-in-the-egcs-footsteps-and-invalidates-the-spanish-trademark","title":{"rendered":"The Mafia no longer has a seat at the table: the OEPM follows in the EGC\u2019s footsteps and invalidates the Spanish trademark"},"content":{"rendered":"

The Spanish Patents and Trademarks Office (OEPM) has declared the trademark \u201cLa Mafia se sienta a la mesa<\/em>\u201d invalid, deeming it contrary to public policy and accepted principles of morality based on the same criteria that led the European General Court (EGC) to invalidate the European trademark in 2018.<\/strong><\/p>\n

\n

In 2018, the European General Court (Case T-1\/17<\/a>) invalidated the European trademark La Mafia se sienta a la mesa<\/em> (\u201cThe Mafia takes a seat at the table\u201d). Eight years later, the OEPM reached the same conclusion in its decision of February 26, 2026, upholding the grounds for invalidation set out in articles 51.1.a) and 5.1.f) of the Trademarks Law: the sign is contrary to public policy and accepted principles of morality<\/strong>.<\/p>\n

The application for a declaration of invalidity was filed once again by the Italian Republic, which argued that \u201cla Mafia\u201d is neither an abstract concept nor a tool of artistic expression, but rather a criminal organization operating on a global scale, including in Spain, whose crimes encompass drug and arms trafficking, money laundering, corruption, and murder.<\/p>\n

The trademark owner, for its part, defended itself by invoking freedom of expression. It argued that the mark originated from a cookbook of the same name and that the term \u201cMafia\u201d has been popularized through film and literature, to the point that the Spanish public perceives it more as a cultural phenomenon than as a direct reference to organized crime. If The Godfather, The Sopranos<\/em>, or Gomorra<\/em> can exploit mob-related imagery, why is a restaurant denied that same freedom?<\/p>\n

In response to these arguments, the Spanish Patents and Trademarks Office (OEPM) shifted the debate to strictly trademark grounds, asking: Can a mark be registered if, due to its content, it conflicts with public policy and accepted principles of morality?<\/p>\n

The Office pointed out, first of all, that the invalidity review must be conducted taking into account the time of the trademark application, that is, the year 2000 in Spain.<\/p>\n

The decision then went on to clarify what is meant by public policy and accepted principles of morality in the context of trademarks. Public policy encompasses the set of fundamental norms, principles, and values of society, including human dignity, freedom, equality, and solidarity. Accepted principles of morality, in turn, refer to the fundamental moral values and standards to which a society adheres at a given time, according to the CJEU\u2019s position in the Fack Ju G\u00f6the<\/em><\/a> case.<\/p>\n

With this legal framework as a starting point, the OEPM proceeded to examine the sign itself. To do so, it analyzed the meaning of the term \u201cMafia\u201d in the Spanish context, drawing on dictionaries, encyclopedias, and press articles that reflect how the mafia phenomenon was already widely known in Spain prior to the year 2000. According to the decision, the term \u201cMafia\u201d cannot be understood as a mere cultural or literary reference, but rather as a real criminal organization.<\/p>\n

Next, the relationship between the mark and the services for which it was registered\u2014in this case, restaurant services\u2014was examined. The OEPM adopted the reasoning of the General Court from 2018: linking the word \u201cMafia\u201d with a pleasant dining experience may trivialize organized crime, if not romanticize it. The expression \u201ctake a seat at the table\u201d does not neutralize that association; on the contrary, it reinforces it by projecting an everyday and seemingly friendly image of the organization.<\/p>\n

The analysis went on to examine the relevant public. The Office held that it does not refer solely to customers who voluntarily choose to visit the restaurant, but to anyone who might encounter the sign incidentally in their day-to-day life. The criterion for assessing whether the sign is offensive is not that of someone who takes offense at everything or someone who takes offense at nothing, but rather that of a reasonable person with average sensitivity and tolerance thresholds.<\/p>\n

Finally, the OEPM addressed the argument of freedom of expression and the popularization of mob-related imagery in film and literature. The fact that this universe appears in movies or novels does not mean that it can become a registered trademark. While intellectual property protects works without making a value judgment on their content, trademark law does set limits on the registration of signs when they conflict with the public interest. This is because the registration of a trademark confers an exclusive right over certain terms or expressions, a privilege that the legal system is not under the obligation to grant.<\/p>\n

In light of all these factors, the OEPM\u2019s conclusion was clear: the sign \u201cLa Mafia se sienta a la mesa<\/em>\u201d is contrary to both public policy and accepted principles of morality. The designation reproduces the name of a real criminal organization whose activities violate the fundamental values upon which the European Union is based. Granting an exclusive right to that sign, the decision noted, would offend not only the victims and their families, but also anyone who shares those values.<\/p>\n

The decision is not yet final: the trademark owner has one month to file an appeal with a higher administrative body.<\/p>\n

It remains to be seen whether the trademark will survive\u2026 or whether the Mafia will have to reinvent itself to take a seat at the table once again.<\/p>\n

Sara Casas\u00a0<\/strong><\/p>\n

\n

Intellectual Property Service<\/a><\/strong><\/p>\n<\/div>\n","protected":false},"excerpt":{"rendered":"

The Spanish Patents and Trademarks Office (OEPM) has declared the trademark \u201cLa Mafia se sienta a la mesa\u201d invalid, deeming it contrary to public policy and accepted principles of morality based on the same criteria that led the European General Court (EGC) to invalidate the European trademark in 2018. In 2018, the European General Court […]<\/p>\n","protected":false},"author":7,"featured_media":12958,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[96],"tags":[733,657],"coauthors":[963],"class_list":["post-12962","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-trademarks","tag-registered-trademark","tag-trademark"],"aioseo_notices":[],"_links":{"self":[{"href":"https:\/\/blogip.garrigues.com\/en\/wp-json\/wp\/v2\/posts\/12962","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blogip.garrigues.com\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blogip.garrigues.com\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blogip.garrigues.com\/en\/wp-json\/wp\/v2\/users\/7"}],"replies":[{"embeddable":true,"href":"https:\/\/blogip.garrigues.com\/en\/wp-json\/wp\/v2\/comments?post=12962"}],"version-history":[{"count":3,"href":"https:\/\/blogip.garrigues.com\/en\/wp-json\/wp\/v2\/posts\/12962\/revisions"}],"predecessor-version":[{"id":12965,"href":"https:\/\/blogip.garrigues.com\/en\/wp-json\/wp\/v2\/posts\/12962\/revisions\/12965"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/blogip.garrigues.com\/en\/wp-json\/wp\/v2\/media\/12958"}],"wp:attachment":[{"href":"https:\/\/blogip.garrigues.com\/en\/wp-json\/wp\/v2\/media?parent=12962"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogip.garrigues.com\/en\/wp-json\/wp\/v2\/categories?post=12962"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogip.garrigues.com\/en\/wp-json\/wp\/v2\/tags?post=12962"},{"taxonomy":"author","embeddable":true,"href":"https:\/\/blogip.garrigues.com\/en\/wp-json\/wp\/v2\/coauthors?post=12962"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}