Maradona: How to prove the transfer of protection rights to an EU trademark?

By its order in Case T-299/22, the EU General Court held that authorisations for commercial use of trade marks and undated agreements authorising use of a trade mark do not justify an amendment to the EUTUE Register[1].

Background:

In 2001, footballer Diego Maradona applied for registration of the EU word mark “DIEGO MARADONA“, EUTM.002243947 (“TradeMark “).

For the Trademark, goods and services in Classes 3, 24 and 42 were selected, i.e. mainly personal care products, drugstore articles, clothing, footwear, headgear (including sportswear), as well as catering, hotel, IT and copyright management services.

Following the footballer’s death, a company owned by Maradona’s former attorney, Sattvica S.A., based in Buenos Aires, considered that the trademark protection right had been effectively transferred to it.

Accordingly, Sattvica S.A. filed an application with the EUIPO to change the rightful owner of the Trademark, submitting the following:

• the authorisation for commercial use of the Trademark, drawn up by Diego Maradona on 26 December 2015, and
• an undated agreement
• authorising
• the use of the Trademark.

The documents submitted by Sattvica S.A. allowed it, on the one hand, to use the Trademark in a commercial capacity and, on the other hand, authorised it to file registration applications for new trademarks that would incorporate the Trademark.

In addition, Sattvica S.A. pointed out that, according to the Spanish language (i.e. the language of the documents), the word “dispose” means the ability to exercise a property right.

Thus, Sattvica S.A. claimed to have a protective right over the Trademark.

This, in turn, would result in the Trademark not being found in the estate, and thus in the lack of standing of the heirs of the deceased footballer to apply for the Trademark.

On the basis of the aforementioned documents, the EUIPO changed the legitimate entity in the register of the EUTUE.

As a result of the above, the heirs of the deceased footballer initiated proceedings for the cancellation of the transfer of the protective right to the Trade Mark.

The decision of the EUIPO First Board of Appeal of 21 March 2022 (R 755/2021-1) indicated that Sattvica S.A. had failed to submit documents duly establishing the transfer to it of the right of protection for the Trade Mark.

Findings of the EU General Court:

The EU General Court upheld the position expressed by EUIPO, thereby confirming that the documents submitted by Sattvica S.A. did not justify a transfer of the right of protection for the Trade Mark in its favour, but only entitled it to use the Trade Mark within the limits of the authorisation granted.

On the other hand, due to the fact that Diego Maradona died before filing the application for change of the entity entitled to the right of protection for the Trademark, the possibility for Sattvica S.A. to cure the formal deficiencies or to submit additional documents confirming the assignment was excluded.

In turn, the authorisations granted to Sattvica S.A. to use the Trademark expired on his death.

Thus, Sattvica S.A.’s application for transfer did not meet the formal requirements set out in Article 20 of Regulation 2017/1001[2] and Article 13(1) of Implementing Regulation 2018/626[3].

With regard to Sattvici S.A.’s second plea, the EU General Court also confirmed that EUIPO does not rule on matters covered by national legislation in the context of the application of Article 20 of Regulation 2017/1001, i.e. contractual or legal issues arising under national law.

However, as the documents submitted by Sattivica S.A. constituted an authorisation to use the Trademark and did not transfer the right of protection to the Trademark, the EU General Court found it unnecessary to address the second ground of appeal regarding EUIPO’s possible interpretation.

Nonetheless, the EU General Court addressed the issue raised by Sattvica S.A. concerning the understanding of the concerned wording used in the documents submitted in accordance with the official language of the national law concerned.

In paragraph 41 of the order in question, it indicated that this did not affect the assessment of the formal conditions.

In doing so, the EU General Court pointed out that the examination of the dates on the documents and thus – the examination of the validity of the authorisations granted – is not an overstepping of EUIPO’s powers.

Author: apl. advocate Mariola Połeć

[1] Order of the General Court of the EU (Second Chamber) of 7 November 2023.

In Case T-299/22, Sattvica S.A. vs EUIPO, Dalma Nerea Maradona Villafañe, Dinorah Gianinna Maradona Villafañe, Diego Fernando Maradona Ojeda, Jana Maradona Sabalain, Diego Armando Maradona Sinagra.

[2] Regulation (EU) 2017/1001 of the EP and of the Council of 14 June 2017 on the European Union trade mark, OJ EU.L.2017.

.154.1.

[3] Commission Implementing Regulation (EU) 2015/2447 of 24 November 2015 laying down detailed rules for the implementation of certain provisions of Regulation (EU) No 952/2013 of the European Parliament and of the Council laying down the Union Customs Code, OJ.U.EU.L.2015.343.558.

Photo/source: Sport.co.uk, “Millions of euros for a ball touched by the “hand of God”. “This is football history”, https://www.sport.pl/pilka/7,64946,29022869,miliony-euro-za-pilke-dotknieta-reka-boga-to-historia-futbolu.html