Diego Maradona, ineffective trademark assignment

By John McKeown

Law360 Canada (November 21, 2023, 10:17 AM EST) --
John McKeown
John McKeown
A battle for control of the trademark DIEGO MARADONA has been shaping up. Maradona was a famous soccer player. In July of 2001 he applied in the European Union for the trademark DIEGO MARADONA and obtained registration in January 2003.

Subject to an exception relating to the sale of an entire business involving the transfer of EU trademarks, the assignment of an EU trademark must be made in writing and requires the signatures of the parties to the contract, unless it results from a judgment; otherwise, the transfer is void.

Transfers

Maradona died on Nov. 25, 2020. Shortly thereafter on Jan. 27, 2021, Sattvica, S.A., sought to register the transfer of the EU trademark for DIEGO MARADONA to it. Sattvica is a company belonging to Maradona’s former lawyer. The substantiation for the transfer consisted of: a) an authorization by Don Diego Armando Maradona dated Dec. 26, 2015, granting Sattvica the power to commercially manage the trademarks “MARADONA,” “DIEGO MARADONA,” and four related marks and (b) an agreement authorizing Sattvica’s use of the trademark.

The heirs of Maradona successfully applied to the European Union Intellectual Property Office (EUIPO) to set aside the registration of the transfer on the basis that there was no documentation or authorization supporting it. EUIPO said the transfer had been made in error.

On Feb. 3, 2021, Sattvica filed a second application for registration of the transfer to itself. The application was supported by a) an undated licensing agreement for the use of the trademark, issued by Maradona in favour of Sattvica, b) an authorization for the commercial exploitation of the trademarks issued by Maradona on Dec. 26, 2015, in favour of Sattvica.

The transfer was initially allowed but subsequently set aside on the basis that the second application did not provide any additional evidence sufficient to justify the transfer of the registration.

Appeal to first board of appeal

On April 26, 2021, Sattvica appealed from the above decision. Maradona’s heirs responded to the appeal and applied for a transfer of the marks in issue to them. They relied in part on orders of courts in Argentina which enjoined Sattvica from attempting to deal with the marks in Argentina and throughout the world.

The First Board of Appeal dismissed the appeal. They observed that the death of the European Union Trade Mark (EUTM) proprietor had an immediate effect, which was to trigger universal succession. By virtue of this, the heirs acquired ownership of the registration and from that moment they were entitled to transfer the registration. In addition, when Maradona died, the authorizations granted to Sattvica would have lapsed due to the death of the grantor. This would also invalidate the application for registration of a transfer in Sattvica’s name.

Appeal to General Court

Sattvica appealed from the above decision to the General Court. The court said none of the documents produced justified an assignment of the mark in Sattvica’s favour under a contract signed between the two parties. A version of the decision is available here

Canadian position

The Trademarks Act proscribes no form of an assignment. A court, in an appropriate case, may infer that an assignment or transfer took place after considering all the relevant facts without the necessity of a written agreement.

The Act extends to applications and registrations. If the request to transfer is made by the applicant or the registered owner no evidence is required to complete the transfer. If the request is made by the transferee evidence satisfactory to the Registrar of Trademarks must be provided.

The registrar has jurisdiction to remove the recording or the registration of the transfer on receipt of evidence satisfactory to the Registrar that the transfer should not have been recorded or registered.

The Federal Court also has jurisdiction under s. 57 of the Act, on application by an interested party, to order that the registration of an assignment be struck out because the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the trademark.

Comment

The Canadian Trademarks Act is potentially broader in scope than the EU legislation, but the procedure is similar in operation. It is important for affected third parties to make sure that they are aware of the proceedings in the trademark office concerning any potential transfer, so they can attack the recording or registration of a transfer if appropriate.

Image rights, including, among other things the player’s name, are important to individual players. The individual player is the owner of such rights, but players often assign such rights to a company created for them. This allows them to keep their image rights out of their main contract with their club. A separate contract may be entered into allowing the club to use the player’s image rights including the right to sublicense the image rights. Perhaps this explains the involvement of Sattivica, but no evidence was filed concerning such an arrangement.

John McKeown, counsel at Goldman Sloan Nash & Haber LLP, is certified by the Law Society of Ontario as a specialist in intellectual property law (trademarks/copyright). He is the author of Canadian Intellectual Property Law and Strategy: Trademarks, Copyright and Industrial Designs. He can be reached at mckeown@gsnh.com.

The opinions expressed are those of the author and do not reflect the views of the author’s firm, its clients, Law360 Canada, LexisNexis Canada, or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

Photo credit / Serhii Ivashchuk ISTOCKPHOTO.COM
 
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