GIs, trade mark and public policy issues over Mafiozo wine

During MARQUES workshop on Geographical Indications (as reported on Class 46), the intersection of brands and GI’s was underlined as one of the next big challenges to be embraced by the IP community and this guest Kat came upon such illustration, with a taste of cultural and public morality, regarding a wine bottle branded ‘Mafiozo’.

Mr. Cherubini, an Italian living in Oslo was outraged last month when his Norwegian girlfriend came home with a bottle of Mafiozo Zinfandel wine.  He contacted the Swedish producer of ‘Concealed wines’ [not concealed so well, sneers Merpel] whose founder replied the wine was actually called 'Mafiozo'- not Mafioso- and referred to a style of hip-hop singing, rather than to the Italian organised crime group [Merpel begs to differ -even her favourite alternative Urban dictionary –refers to a rap gender spelled MAFIOSO]

Cherubini further went to the local press explaining the causes of his furor:  he has many friends in Sicily who live through the web of organised crime known as mafia every day of their lives, "and thousands of people have died by the greedy hands of this organized crime group”. N.b.: 'mafia' is commonly misused as a ‘generic’ term for organized crime, in reality it should only be used for an organization located in Sicily.

CTM for Spanish restaurants chain  

From a trade mark point of view, words or signs contrary to “public policy or to accepted principles of morality” can be refused on Absolute Grounds according to Article 7 (1) f) CTMR. However, the threshold is not well defined and it emerges from OHIM database that several CTM’s including the word Mafia are registered for a variety of goods and services.

This summer, a Norwegian citizen raised again questionable principles of morality by Italian wine producer and his historical collection of “joke gifts”- reported here by the IPKat who introduced the idea of a “non-mark” for public policy reasons. In that case, an Italian court found that the wines bearing portraits of Mussolini of Hitler were not meant  for ‘the promotion of fascism’ and thus were within acceptable public policy limits.

Another arguable legal issue is-underneath the label with a depiction of a mobster- Lucky Luciano or Al Capone?- and the word MAFIOZO, appear the words Zinfandel followed by Salento- protected GI. 

From a GI point of view, the 2009 EU regulation for wine products provides for the protection against the following infringements, among others:

• direct or indirect use of the name in relation to comparable products that do not comply with the specification;
• direct or indirect use of the name which exploits the reputation of the designation of origin or geographical indication;
• any false or misleading indication as to the provenance, origin, nature or essential qualities of the product; and
• other practices liable to mislead a consumer as to the true origin of the product.

In particular, Puglia wines are protected GI’s since 1995 and the Salento IGT regulation provides in its Article 3 that at least 85% of the grapes must originate from the Puglia region and does not provide for a “zinfandel” specification term.

In fact, Puglia wine producers represented by the Puglia region, joined by the Italian Farmers Confederation, complained  to the Italian embassy on the grounds that 1) grapes from Salento are probably  mixed with grapes from California and the wine is actually produced in Sweden [the actual percentage would have to be checked], thus not respecting the quality, correctness and food control of Salento GI products; 2) the producers are taking advantage of the fame of Italian quality while damaging its reputation it by associating with organized crime.

In the official communication, producers pointed out that counterfeit products touch the agricultural and food business and 20% concern wine goods. The Puglia authorities mentioned they planned to engage the responsibility of the Swedish wine producer  for the misleading marketing and request sanctions.

we are watching you

However, no action was necessary as Concealed Wines’ Marketing department, in a smart PR move, issued a statement declaring “it was not our intention to offend anyone, we will stop the production under MAFIOZO but have not yet chosen a new name” – suggestions anyone?

Sicilian winemakers making an offer you can't refuse

Feral Cat Mafia  here