Maradona's former lawyer drops the ball in EUTM transfer dispute

In a recent decision (T-299/22) that will be of interest to all trade mark practitioners, the Second Chamber of the General Court of the European Union (the Court) found that the documents submitted by Maradona's former lawyer in support of his request for the transfer of an EU trade mark (EUTM) to his company, did not comply with the necessary formalities and therefore could not be registered, regardless of whether the company was entitled to ownership of the mark or not. 

Background

In 2001, Diego Armando Maradona, widely regarded as one of the best football players of all time, submitted an application to register the word mark DIEGO MARADONA (the Mark) as an 

EUTM in classes 3, 25 and 42, in respect of a range of services. The Mark eventually registered in 2003 (the Registration). 

Just Maradona not attracting any attention at Napoli

In 2021, following Maradona's untimely passing the previous year, Sattvica SA, an Argentinean company established by the footballer's former IP lawyer, applied for the Registration to be transferred to it (the Application). 

The Application was largely based on a document signed by Maradona (with his "Hand of God"?) in 2015, which authorised Sattvica to undertake commercial exploitation of the Mark, and another undated agreement. The European Union Intellectual Property Office (EUIPO) accordingly allowed the Application. 

However, in 2021, Maradona's heirs applied for the entry of the transfer of the Registration invalidated, alleging that no valid documentation had been provided by Sattvica in support of the transfer. The EUIPO annulled the transfer the same day, indicating that it had been done "in error". 

The situation repeated itself following a further application by Sattvica, the EUIPO once again considering that the documents provided by Sattvica did not provide sufficient proof of the transfer of the Mark to it. 

After an unsuccessful appeal to the EUIPO's Board of Appeal, Sattvica appealed to the Court. 

The Court's decision

Sattvica's grounds of appeal were, in summary:

1. The Board of Appeal erred in assessing that the formal conditions for transfer, set out in Article 20 of the EU Trade Mark Regulations (EUTMR), were not fulfilled; and
2. The Board of Appeal committed an error of law by ruling on questions which fall within the remit of national legislation pursuant to Article 20 EUTMR. 

Sattvica also requested, in addition to the annulment of the Board of Appeal's decision, that the Court order the EUIPO to process the transfer of the Registration to it. 

Interestingly, the Court decided that it could proceed to issue an Order on the matter without the need for a hearing, which it can do under the terms of Article 126 of its Rules of Procedure for actions "manifestly bound to fail" (never a particularly welcome description for one's application - see also GEA Group v OHIM, T-545/14).

Order for registration

The Court began by addressing Sattvica's request that the Court should order the EUIPO to process the transfer of the Registration, and held that, in the context of the review of the legality of a decision pursuant to Article 263 of the Treaty on the Functioning of the European Union (TFEU), the Court did not have the power the issue injunctions (whether prohibitive or positive, such as that sought by Sattvica) against EU institutions. This head of claim was therefore rejected on jurisdictional grounds.  

Kat trying to figure out this foosball bizness..

Photo: Found Animals

Annulment

In respect of the first ground of appeal, Sattvica relied on wording in one of the agreements signed by Maradona, which authorised it both to register new trade marks, and to "have" the Mark - which Sattvica argued should be interpreted as permitting it to exercise a right of ownership over the Mark, and consequently placed the Registration outside of the estate assets which the heirs were entitled to.

The Court began by setting out the various requirements for the transfer of a registered EUTM pursuant to paragraph 1-3, 5 and 7 of Article 20 EUTMR, the most important for present purposes being paragraph 5, which requires an application for transfer to include, amongst other information and documentation, the "documents duly establishing the transfer". 

Paragraph 2 of the same requires that the assignment of the relevant trademark be "made in writing and shall require the signature of the parties to the contract", and Article 13 of the Implementing Regulation 2018/626 clarifies that the information required pursuant to paragraph 5 shall include the registration number of the mark to be transferred, as well as detailed information on the new holder. 

In this case the Court agreed with the EUIPO that, whereas the documents produced by Sattvica constituted authorisations to use the Mark, they did not "formally justify" the transfer of the Registration to Sattvica, within the context of a signed agreement between the two parties as required. 

Whether or not Sattvica was granted the right to "have" the Mark, or even whether the Mark fell within Maradona's estate or not, were not relevant to the question of whether the specific formalities required by Article 20 EUTMR had been fulfilled.  

In light of the above, it was not necessary for the Court to delve into the second ground of appeal, namely whether the EUIPO had erred in its interpretation of the relevant agreements under national law. Both grounds of appeal were therefore rejected. 

Comment

This decision highlights the importance of carefully ensuring that all formalities for the transfer of an EUTM under Article 20 EUTMR are fulfilled, as it does not necessarily follow that the EUIPO will infer that a transfer is justified based on any party's legal entitlement to a mark.