Silhouette with number 10 does not infringe Maradona trademark

The legendary footballer Maradona has been gone for years, but his name and image still live on in the streets of Naples and Argentina.

The Argentine company Sattvica S.A. claims to hold all trademark rights related to Maradona. The company owns over 150 Maradona-related trademarks, registered across various countries. Despite ongoing disputes with Maradona’s heirs, Sattvica is currently still entitled to invoke the MARADONA marks in legal proceedings.

Recently, the company came across two European figurative trademark applications that, in their view, could be directly associated with the football legend, and therefore filed oppositions. The Opposition Division of the European Union Intellectual Property Office (EUIPO) recently issued decisions in these matters.

A noteworthy detail: both applications were filed by Liya Chen from Rome, who claims to hold a power of attorney from Maradona himself. Documents submitted by both parties show that, at different points in time, both the opponent and the applicant appear to have been authorised by Maradona to use his name and/or likeness and to file trademarks. Unfortunately for Liya Chen, the Opposition Division is not competent to assess the validity of those documents, and this issue was not further examined in these proceedings.

One of the applications filed by Liya Chen involved a figurative mark showing Maradona’s likeness, including his signature and full name, see below:

The other application concerned the silhouette of a footballer with the number 10 on his back:

Sattvica S.A. filed oppositions against both marks, based on its word mark MARADONA.

The opposition concerning the portrait and name was fairly straightforward: a likelihood of confusion was found for similar goods and services. The Opposition Division considered the shared surname “MARADONA” to be decisive in establishing a similarity between the marks. Although the contested mark is a complex one, featuring additional figurative, verbal, and numerical elements, all of these contribute to the identification of the famous footballer Maradona. There can be no doubt about this in the perception of the public. Another factor was that “Maradona” is an unusual surname within the EU. The contested mark immediately evokes an association with the famous footballer and the earlier MARADONA mark, resulting in a likelihood of confusion.

This application of this trademark was therefore refused. But does the same apply to the silhouette with the number 10 – the jersey number worn by the Argentine footballer for most of his career? This trademark does not include the word MARADONA, but only a visual reference to Maradona.

Sattvica based the opposition on two grounds. First, the reputation of the earlier mark: MARADONA was said to be so well known that the figurative mark would ride on that fame – and thereby damage the distinctiveness or reputation of the MARADONA mark. Reputation, however, must be properly substantiated with evidence of the mark’s reputation. As the opponent failed to submit such evidence, this ground was rejected.

The second argument concerned likelihood of confusion. The image shows a footballer in action, with curly hair and the iconic number 10. According to the applicant, it represents none other than Maradona. Number 10 and Maradona… for football fans, the connection is quickly made. But for those less footbal-savvy, it probably just leaves you guessing. In other words: conceptually, a part of the public may associate the sign with the Argentine footballer – but mainly those with some knowledge of or interest in football. Visually and phonetically, the signs are not similar: the differences are clear.

The Opposition Division did not find the signs similar: even if two marks evoke the same person or idea, this does not automatically lead to a likelihood of confusion. Especially when the earlier mark is not exceptionally well known or distinctive, a shared meaning – such as a reference to Maradona – is not enough.

The Opposition Division therefore rejected the opposition: the possible conceptual link for part of the public is therefore insufficient to establish a likelihood of confusion.

Author: Erwin Haüer

Bio: Erwin is a trademark attorney and, as the managing partner, in charge of IT and Information Management. He works extensively with startups and scale-ups, while his clientele also includes numerous multinational corporations. Erwin possesses a sharp wit and a keen eye for remarkable trademark news and curious brand infringements.