The EUIPO Boards of Appeal has recently decided on a rather complex case (Case R 755/2021-1) having as object the right to register the transfer of the ownership of the trademark “Diego Maradona” no. 2243947 registered in name of the famous football player.
The case
The case was brought by the company Sattvica, S.A. which asked and obtained, twice, the registration of the transfer in its favor of the ownership of the trademark “Diego Maradona”, filing documentation however not suitable to prove the assignment of the trademark.
In particular, with a first instance, Sattvica submitted an authorization of December 2015 which granted it the power to “commercially manage” a series of trademarks of the well-known football player, including, apparently, the one having as object the sign “Diego Armando” and two authorizations – even without a date – related to the use of the trademarks in question.
These acts, however, did not contain any indication of the number of the registrations nor the country of validity.
With the second request for registration, however, the representative of Sattvica had produced, in addition to two of the above-mentioned authorizations, also a general power of representation issued by Sattvica to its own representative.
Sattvica considered the authorizations released by Diego Maradona during his life could be valid as a transfer of ownership, which, of course, were not.
In both cases the representative before the EUIPO of the owner of the EU trademark “Diego Maradona” asked the Office to declared the nullity of the above-mentioned subscriptions in favor of Sattvica and in both occasions the Office declared that the subscriptions had been made by error and were to be considered null and void.
Sattvica appealed against the second decision of the EUIPO resorting to the Boards of Appeal, asking, in brief, the contested decision to be revoked and the Office to give an explanation of the error and of the failure to grant a deadline to rectify accordingly.
Pending the appeal proceeding, also the heirs of Maradona had requested the registration of the transfer of ownership of the European trademark “Diego Maradona” in their favor, highlighting, inter alia, that according to article 1329 of the Commercial and Civil Code of the Argentine Republic the death of the principal – in this case Diego Maradona – involves the extinction of the mandate.
For this reason, Sattvica did not have the power to make the application for the assignment.
The decision
With decision of March 21st 2022, the Boards of Appeal rejected the appeal presented by Sattvica, highlighting, first of all, that the immediate effect triggered by the death of a EUTM proprietor is the universal succession: the heirs of the deceased acquire the ownership of the trademark and only they can transfer the relative rights.
Art. 20(3) of the Regulation (EU) 2017/1001 states, as far as this case is concerned, that the assignment is valid only if made in writing and signed by both parties. Moreover, on the basis of article 20(5) of the same Regulation, “the application for registration of a transfer must contain information identifying the EU trademark, its new proprietor, the goods and services to which the transfer relates, as well as documents duly establishing the transfer”.
In the decision in question the Boards of Appeal lastly specified that “the Office will examine the documents only to the extent that they confirm what indicated in the application” of transfer: nevertheless “the Office does not pronounce or consider contractual or legal issues arising from national law. If doubts arise, the national courts deal with the legality of the transfer itself”.
As maybe known, Maradona passed away on November 25 2020, months before Sattvica submitted its first application for transfer.
The Boards of Appeal then decided that:
- the contested decision was not lacking motivation, since the Office, on the contrary, expressly affirmed that with the second application the applicant did not provide any further evidence sufficiently justifying the transfer ownership in its favor, as requested by art. 20(5) of the Regulation;
- the failure to grant a period for the rectification came from a fair reason, that is, the impossibility, following the death of the football player, to remedy the situation by correcting the documents on which the application was based.
Moreover, the decision shows that during the “controversy” the heirs of Maradona had even produced the order no. 43 of the Argentinian Juzgado Nacional de lo Criminal y Correccional, by which the Court prohibited Sattvica to renew and close contracts related to the trademarks having as object the name, the pseudonyms and the representation of Diego Armando Maradona’s image “in all its variants (word, figurative and mixed), both for the territory of the Argentine Republic and for any other country in the world”. This order – in the Boards of Appeal’s opinion – strengthened the impossibility to correct the error.
Lastly, even admitting that a sanatory could be possible, the applicant did not ask neither the heirs of Maradona for an authorization, not even pending appeal, to remedy the irregularities in the application for transfer. Therefore, the appeal of Sattvica was to be rejected and the contested decision to be confirmed.
Roberta Bagnoli