EARN NetworkEARN Network
Madrid, 13th March 2026
Trademark law has limits: Glorifying organized crime forfeits monopoly rights – even after 20 years of use and millions in revenue. The “LA MAFIA SE SIENTA A LA MESA” case shows how the EU Court, EUIPO, and Spanish Patent Office declare such marks invalid for romanticizing the Mafia and violating core European values. Crucial for cross-border businesses: Provocative branding today can be retroactively nullified tomorrow for breaching public order and morals.
On 26 February 2026, the Spanish Patent and Trade Mark Office (SPTO) issued a decision upholding the application for invalidity of Spanish trade mark no. M2326550 «LA MAFIA SE SIENTA A LA MESA» (“THE MAFIA SITS AT THE TABLE”), filed by the Republic of Italy. The decision declared that the sign is «contrary to both public policy and accepted principles of morality», since it directly reproduces the name of a criminal organisation whose activities «do not constitute a remote or merely literary phenomenon, but a persistent reality». This decision concludes, at the national level, the proceedings initiated before the European Union Intellectual Property Office EUIPO in 2015, which had already been resolved at the European level by the landmark judgment of the General Court of the European Union (GCEU) of March 2018.
The normative basis for this declaration of invalidity is twofold. At the national level, Article 5.1(f) of Law 17/2001 of 7 December on Trade Marks establishes as an absolute ground for refusal the impossibility of registering «signs contrary to the Law, public policy or accepted principles of morality». At the EU level, the equivalent provision is contained in Article 7(1)(f) of Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark (EUTMR), formerly Article 7(1)(f) of Regulation (EC) No 207/2009. Both provisions are the expression of a common principle: the legal order cannot confer exclusive rights over signs that undermine its own fundamental values.
The restaurant chain «LA MAFIA SE SIENTA A LA MESA», whose proprietor was the company La Mafia Franquicias, S.L. (Zaragoza), registered EU trade mark no. 005510921 at the EUIPO on 20 December 2007, obtaining its grant in 2008. In July 2015, the Italian Government filed an application for a declaration of invalidity before the EUIPO, invoking Article 7(1)(f) of the EUTMR. The Cancellation Division upheld the application by decision of 3 March 2016. Upon appeal before the First Board of Appeal of the EUIPO (case R803/2016-1), the latter confirmed the invalidity on 27 October 2016. The proprietor then brought an action before the GCEU, which dismissed it as unfounded by judgment of 15 March 2018 (Case T-1/17, La Mafia Franchises v EUIPO and Italy).
With all European avenues exhausted, the situation in Spain was paradoxical: the national trade mark, protected under Spanish registration no. M2326550, remained in force. Italy approached the SPTO to seek its invalidity, which was ultimately granted in February 2026, eight years after the GCEU judgment. The company, which reported revenues of €132 million in 2025 and operates 114 restaurants in Spain, has announced an administrative appeal before the SPTO itself. Italy has simultaneously initiated proceedings before the Commercial Courts (Juzgados de lo Mercantil) of Barcelona to obtain an order for cessation of use of the trade name.
The doctrine set out by the GCEU in judgment T-1/17, substantially reproduced by the SPTO in its 2026 decision, articulates the invalidity on three argumentative pillars of undeniable soundness:
a. Direct reference to a real criminal organisation. The term «mafia» is understood worldwide as a reference to a criminal organisation of Italian origin that resorts to intimidation, physical violence and murder to carry out activities such as illicit drug and arms trafficking, money laundering and corruption. The GCEU emphasised that these activities directly undermine the values of respect for human dignity and freedom enshrined in Article 2 of the Treaty on European Union.
b. Trivialisation and romanticisation of organised crime. The combination of the term «mafia» with the evocation of a convivial situation — sharing a table — produces an effect of trivialising the unlawful activities of the organisation, lending them an aura of respectability incompatible with the ethical and moral principles recognised in the Member States. The SPTO adds that the use of this trade name in the hospitality sector «would offend and deeply disturb the victims and their families».
c. Irrelevance of the proprietor’s intention and prior use. The GCEU expressly rejected the argument that the literary origin of the name — a cookbook of the same title — exempted the sign from the absolute prohibition. Trade marks contrary to public policy or accepted principles of morality may be challenged at any time, even after long periods of undisturbed market use, and prior renewal by the registration authority itself creates no vested rights. The SPTO further noted that the criminal organisation had been established in Spain before the company registered the mark, which reinforces the disturbance to the national public order.
The invocation of freedom of expression — enshrined in Article 10 of the ECHR and Article 11 of the EU Charter of Fundamental Rights — was likewise rejected: the prohibition on registration does not prevent the use of the sign in commerce, but only the acquisition of an exclusive right. There is therefore a proportionate balancing between the protection of freedom of enterprise and the safeguarding of the values of the legal order.
The present case is not an isolated occurrence in the European and Spanish trade mark landscape. The following precedents merit particular attention:
«FIDEL CASTRO» and «ETA» (EUIPO). The European Union Intellectual Property Office refused registration of these denominations as being contrary to public policy, since the marks associated the sign with regimes or movements that violated human rights and democracy. The «ETA» case is particularly relevant to the Spanish legal order given the evident connotation of domestic terrorism.
«JE SUIS CHARLIE» (EUIPO). The European office refused the application to register this expression associated with a terrorist attack, considering that its commercial appropriation would constitute an unacceptable instrumentalisation of the victims’ suffering, contrary to accepted principles of morality.
«FACK JU GÖHTE» (CJEU, judgment of 27 February 2020). In this case, the Court of Justice annulled the decisions of the EUIPO and the GCEU that had refused registration, finding that the expression — the title of a hugely commercially successful film — had lost its offensive character through social trivialisation. This ruling demonstrates the dynamic nature of the concept of «accepted principles of morality» and the need to assess the socio-cultural context at the time of examination.
«PIG DEMONT» (SPTO, 2018). The SPTO refused this application ex officio, considering it contrary to public policy for making an offensive allusion to a former regional president, which could offend the sensibilities of a significant section of Spanish society. The case illustrates the application of the absolute prohibition in matters of domestic political relevance.
«TOP MANTA» (SPTO). The SPTO refused registration on the grounds that the sign was identified by the public as a form of street trading in counterfeit goods, thereby denying registration legitimacy to denominations intrinsically associated with unlawful activities.
The «LA MAFIA SE SIENTA A LA MESA» case raises a question of undeniable interest for the general theory of trade mark law: the tension between legal certainty — derived from prior registration and successive renewals over more than two decades — and the principle that exclusive rights cannot arise from signs which the legal order disapproves of from the outset. Absolute invalidity operates ex tunc: the registration is deemed never to have been granted, and the passage of time does not cure the original defect.
In light of the established doctrine, it may be concluded that the SPTO decision is fully in accordance with the law and consistent with European case-law. Its tardiness — eight years after the GCEU judgment — merely underscores the independence between the EU trade mark system and the national trade mark system, serving as a reminder that the invalidity of an EU trade mark does not automatically extend to a national registration. The action initiated by Italy before the Commercial Courts of Barcelona, aimed at obtaining an order for the cessation of actual use of the denomination, constitutes the natural procedural complement to the administrative declaration of invalidity.
Author: Luis Sánchez Pérez, Director Mercantil, Medina Cuadros Abogados S.L, Granada, Spain
Sources consulted: CJEU (Second Chamber) judgment of 27 February 2020 (C-240/18 P, «Fack Ju Göhte»); GCEU judgment of 15 March 2018 (T-1/17, «La Mafia Franchises v EUIPO»); SPTO Decision of 26 February 2026 (invalidity M2326550); EUIPO Cancellation Division Decision of 3 March 2016; EUIPO First Board of Appeal Decision of 27 October 2016 (R803/2016-1); Spanish Law 17/2001 of 7 December on Trade Marks (Art. 5.1(f)); Regulation (EU) 2017/1001, Art. 7(1)(f); EUIPO Guidelines for Examination of European Union Trade Marks (Part B, Section 4);