Source: EURLEX
Language: en
Format: md

Case T‑1/17

La Mafia Franchises, SL

v

European Union Intellectual Property Office

(EU trade mark — Invalidity proceedings — EU figurative mark La Mafia SE SIENTA A LA MESA — Absolute ground for refusal — Whether contrary to public policy or to accepted principles of morality — Article 7(1)(f) of Regulation (EC) No 207/2009 (now Article 7(1)(f) of Regulation (EU) 2017/1001))

Summary — Judgment of the General Court (Ninth Chamber), 15 March 2018

1. EU trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Re-evaluation of the facts in the light of evidence produced for the first time before it — Precluded

   (Council Regulation No 207/2009, Art. 65)
2. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Trade marks which are contrary to public policy or to accepted principles of morality — Examination by reference to the perception of the sign by the relevant public — Reasonable person with average sensitivity and tolerance thresholds

   (Council Regulation No 207/2009, Art. 7(1)(f))
3. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Trade marks which are contrary to public policy or to accepted principles of morality — Figurative mark La Mafia SE SIENTA A LA MESA

   (Council Regulation No 207/2009, Art. 7(1)(f))
4. EU trade mark — Decisions of the Office — Legality — EUIPO's previous decision-making practice — Principle of non-discrimination — Irrelevant

   (Council Regulation No 207/2009)
5. EU trade mark — Definition and acquisition of the EU trade mark — Assessment of the registrability of a sign — EU rules only taken into account — Decisions of national authorities not binding EU bodies

   (Council Regulation No 207/2009)

1. See the text of the decision.

   (see para. 16)
2. The public interest underlying the absolute ground for refusal laid down in Article 7(1)(f) of Regulation No 207/2009 on the European Union trade mark is to ensure that signs which, when used in the European Union, would be contrary to public policy or to accepted principles of morality are not registered. The registration of a mark as an EU mark is caught by that absolute ground for refusal if, inter alia, it is deeply offensive.

   The assessment of the existence of that ground for refusal cannot be based on the perception of the part of the relevant public that does not find anything shocking, nor can it be based on the perception of the part of the public that may be very easily offended, but must be based on the standard of a reasonable person with average sensitivity and tolerance thresholds.

   Moreover, the relevant public cannot be limited, for the purpose of the examination of that ground for refusal, to the public to which the goods and services in respect of which registration is sought are directly addressed. Consideration must be given to the fact that the signs caught by that ground for refusal will shock not only the public to which the goods and services designated by the sign are addressed, but also other persons who, without being concerned by those goods and services, will encounter that sign incidentally in their day-to-day lives.

   It must also be borne in mind that the relevant public within the European Union is, by definition, within a Member State and that the signs likely to be perceived as being contrary to public policy or to accepted principles of morality are not the same in all Member States, inter alia for linguistic, historic, social and cultural reasons.

   It follows that, in order to apply that absolute ground for refusal, it is necessary to take account both of the circumstances common to all Member States of the European Union and of the particular circumstances of individual Member States which are likely to influence the perception of the relevant public within those States.

   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. Moreover, it follows from a combined reading of the various subparagraphs of Article 7(1) of Regulation No 207/2009 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.

   (see paras 25-29, 40)
3. See the text of the decision.

   (see paras 30-48)
4. See the text of the decision.

   (see para. 49)
5. See the text of the decision.

   (see para. 50)

[Top](#document1)