An Italian consumer Mr Cherubini was recently outraged when he came across a wine bottle branded ‘Mafiozo’ due to its similarity to the term the Mafia, he subsequently contacted the producers of the wine and raised his concerns, the owners of the trade mark responded that the wine was named after a style of hip-hop singing and was in no way related to the Italian organised crime group. (However if you carry out a simple google search on the term ‘Mafiozo’, the Sicilian Mafia is at the top of the search results!).
Cherubini was not satisfied with the response from the wine producer and took his complaint to the press explaining the reasons for his dismay, he was particularly upset as many of his friends resident in Sicily are affected by the organised crime group on a daily basis, he also pointed out that thousands of lives had been lost at the hands of mafia.
Trade Mark legislation
The current Community Trade Mark Regulations (CTMR) and the Trade Marks Act 1994 (TMA) both state that marks contrary to public policy or accepted principles of morality shall be refused registration under the absolute grounds for refusal.
In particular Article 7 (1) (f) CTMR and Section 3 (3)(a) of the TMA 1994, contain the prohibitions. It seems however that the rules are not very well defined as searches on the OHIM and TM registry in the UK both reveal successful registrations of the exact term ‘mafia’ for a diverse range of goods and services on the market??
Fortunately for Cherubini there was a happy ending as the producers of the wine issued the following statement “it was not our intention to offend anyone, we will stop the production under MAFIOZO but have not yet chosen a new name”, a wise PR move on the part of the wine producer.
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