Establishing a reputation in the EU, a defeat for Diego Maradona on the trade mark pitch

On 5 November, the EUIPO issued two decisions in opposition proceedings [Sattvica S.A v. Global Royal Empire FZ-LLC - Opposition Division No. B3202951 & No. B3202952], which are good reminders of the conditions to establish reputation in a European Union Trade Mark. 

“A sign does not enjoy any reputation inherently, simply because it refers to a renowned person or event, but only for the goods and services it designates and the use that has been made of it”.

While Diego Maradona is recognised as one of the well‑known people in the world, the Opposition Division considers that there is no reputation for the MARADONA trade mark in the European Union.

Background

In May 2023, Global Royal Empire (the Applicant) filed two European Union Trade Mark applications for the figurative signs set out below, in relation to various goods and services including bags, clothing, sporting articles and organisation of sporting events (the Applications).

Sattvica (the Opponent) filed an opposition against these applications, based on the likelihood of confusion with the EUTM for MARADONA (covering various goods/services, including clothing, sporting articles and activities) and the reputation in this mark (Article 8(1)(b) and Article 8(5) EUTMR, respectively).

Interestingly, the Applicant and the Opponent are involved in a license agreement, granted by the famous Argentinian footballer Diego Maradona, and identified as ‘licensees’. According to this agreement, both parties are authorised to operate independently from one another (but not in a competitive way) to create, develop and implement projects and/or products bearing the image of the grantor. The EUIPO confirmed that it cannot enter into the assessment of a possible breach of this contract, or its consequences, as this goes beyond its competences.

Argument based on the reputation in the MARADONA trade mark – Article 8(5)

In order for this argument to be successful, the Opponent needs to establish that its trade mark had a reputation in the European Union, prior to the filing date of the application, in relation to the relevant goods and services. It must also show that the use of the application would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The Opponent submitted various documents in these proceedings, including a list of all the trade marks registered worldwide, a decision from the Court of Milan confirming the notoriety and attractiveness of the name MARADONA as well as images showing the marketing of multiple goods/services under the MARADONA name as featured below.

The Opponent argued that Diego Maradona is one of the well‑known people in the world, a personality that requires no introduction, and this does not need to be proven.

The EUIPO agreed that MARADONA is a widely known name and associated by the general public of the European Union with the Argentinian footballer Diego Armando Maradona (1960‑2020). Maradona is also recognised by numerous specialists, former football players and international personalities as one of the best players in history. However, when assessing the documents submitted by the Opponent, the Office did not consider them to show reputation in the MARADONA trade mark in relation to the covered goods/services. 

The decision of the Court of Milan seemed to refer to the right to a person’s name, not the trade mark. The list of registered trade marks merely shows an intensive activity to protect the sign in questions. Finally, most of the goods bearing the sign MARADONA in the marketing materials, do not relate to the use of the mark itself but the name of the famous footballer.

The EUIPO reiterated that “a sign does not enjoy any reputation inherently, simply because it refers to a renowned person or event, but only for the goods and services it designates and the use that has been made of it”. The Opposition Division noted that the evidence submitted by the Opponent was not sufficient to demonstrate that the earlier mark had acquired a reputation through its use in the market in relation to the covered goods/services. 

The claim under Article 8(5) failed.

Argument based on the likelihood of confusion between MARADONA and the Applications – Article 8(1)(b)

In both cases, the Office proceeded on the basis that the goods and services under comparison were identical being, for the Opponent, the best light in which the oppositions could be examined.

Turning to the comparison of the marks, the Opponent argued that the first Application corresponds to the silhouette of Maradona, when he scored a goal in the 1986 FIFA World Cup final, and that the term ‘D10S’ also refers to the player.

For the second Application, the Opponent claimed that the term ‘DIEGUITO’ refers to the renowned footballer Maradona and the cartoon character is a drawing of him when he played for Calcio Napoli.

Without any surprise, the Office noted the visual and aural differences between the signs, but did confirm that the marks were conceptually similar for the “public with certain sports knowledge”. Overall, the Office confirmed that the certain conceptual link that could be established for a part of the public is not sufficient to give rise to a likelihood of confusion or association. Although the signs may eventually evoke the image of the same famous person, the EUIPO considered that consumers would not perceive or associate the signs in dispute with the same commercial origin, in relation to the goods and services in question. The second claim under Article 8(1)(b) failed as well.

Reflection and key elements

This decision is a textbook case and the EUIPO reiterated the usual principles to assess the reputation of a European Union trade mark. It certainly reminds us the importance of submitting relevant documents confirming the degree of recognition of the trade mark by the relevant public in relation to the goods/services in question, concrete information regarding the market share held by the trade mark or about the awareness of the trade mark, the intensive sales, etc.

The fact that a name is well-known is not enough to consider the eponymous trade mark has having a reputation in the European Union.

Also, a conceptual similarity (for a specific category of the public being with certain sports knowledge or fondness for football) is not enough to conclude to a likelihood of confusion. 

It will be interesting to see if the Opponent continues in extra time, and considers invalidation action against these marks (once registered) on other grounds, perhaps on the basis of the Applicant’s bad faith (taking into account their relationships) or on the right to a person’s name (based on national law).