An Aragonese company used the brand ‘La Mafia’ for its restaurants. Italy has managed to have it annulled in Spain
The restaurant chain ‘The Mafia sits at the table’ it’s news. And not because of the new features of its Italian-inspired menu or because of the opening of new stores. What has made it hit the headlines (much to its chagrin) is its brand, a business card that the Republic of Italy considers offensive and takes years starring in a complicated judicial soap opera. Now Roma has achieved a key victory that puts the brand in serious danger in Spain. The key: Can the word ‘mafia’ be used happily? What has happened? The news has advanced it the diary Expansion. The Spanish Patent and Trademark Office (OEPM) has resolved that the name of ‘The Mafia sits at the table’a popular restaurant chain founded more than 20 years ago in Zaragozais “contrary to public order and good customs”, which is why it has endorsed the request for annulment made by the Government of Italy. The OEPM resolution is recent (February 26) and leaves little room for interpretation. In the opinion of its techniciansthe brand alludes to a real organization with activities “contrary to the ethical and moral principles” of the EU. Hence, I agree with Italy that it is questionable whether it can be registered and exploited on a commercial level. “It would offend the victims and their families,” he warns. Is it something new? Yes. And no. Italy has been maneuvering for years to force the Aragonese restaurant chain to abandon a name that it considers offensive. And nothing has gone wrong in his efforts. In 2015, he filed a complaint that led to the EU Intellectual Property Office (EUIPO) refusing to register the trademark at the community level. Years later (2018) it was marked equally important when the General Court of the EU (TGUE) endorsed the decision of the EUIPO and prevented the company from shielding its commercial name. What does that mean? That was more than a simple judicial victory. The decision The TGEU prevented the company from registering its trademark at the community level, which in practice left it unprotected. However, the TGUE’s decision had its limitations. For example, it did not prevent the Zaragoza chain from continuing to use its name in the dozens of restaurants it has throughout Spain. What changes now? The OEPM opinion goes one step (and several) further. The brand is no longer only annulled at the community level, but it is also doing so in Spain, a fundamental decision since ‘La Mafia sits at the table’ (remember) is a chain born 26 years ago right here, in Zaragoza. The Spanish organization has aligned itself with European justice and has come to the conclusion that the name is “contrary to public order” and “good customs”, which is why it has endorsed the request for annulment presented by Italy. Not only that. The transalpine country has already gone to the commercial courts of Barcelona to prevent the Aragonese company from continuing to use its name. What will happen now? “The resolution could be issued in less than a year and, if favorable, would force them to cease using the trademark,” explains to Expansion Josep Carbonell, partner of Fieldfisherthe office that has advised Italy in the procedure. Of course, the company also has margin (one month) to appeal the OEPM’s decision. In any case, its resolution of February 26 represents a setback for the future of the brand in its large market. What is the problem? The underlying question is very simple: can the word ‘mafia’ be used happily or not? Should its commercial use be banned? The company claims that it was inspired by a recipe book and appeals to the right to freedom of expression, remembering in passing that it is not unusual to find books, movies and series focused on the same topic. years ago in fact already clarified that its objective is not to offend anyone, but to generate an atmosphere similar to that of the ‘Godfather’ saga. For the authorities, however, the reading is somewhat different. In its resolution, the TGUE recalled that (at least in this case) using the term “banalizes organized crime” and even warned of the risk of “romanticizing” it. In a similar vein, the OEPM recalls that Spain is no stranger to this criminal organization and its activities, “contrary to the ethical principles” and “fundamental moral values of the EU.” In the background there is a more complex issue, such as remember Carbonell: Is using the word ‘mafia’ in an artistic work the same as elevating it to the category of a business’ trademark? Is it an isolated case? Not at all. The Italian authorities have not only focused on the Zaragoza company. In 2024, fed up with his town being associated with organized crime, the mayor of Agrigento (Sicily) issued a municipal order to prohibit the sale of tourist souvenirs related to the mafia. The underlying reason was similar: to prevent people from doing business with (and romanticizing) an organization that, beyond the veneer that Hollywood has given it, has been causing headaches for the Italian authorities for years. Images | The Mafia 1 and 2 Via | Expansion In Xataka | Sushi was a sleeping giant of the fast food industry: in the US it has already begun to eat hamburgers
