On March 21 2022, the Board of Appeal of EUIPO declared null and void the registration of the assignment requested by the company SATTVICA, S.A., licensee of several EU trademarks of Don Diego Armando Maradona, concerning the EU trademark No. 002243947 "DIEGO MARADONA", filed on 9 July 2001 and registered on 8 January 2003 in classes 3, 25 and 42.
The case started from the application for registration of the assignment in support of which SATTVICA submitted the following documents: i) an authorisation issued on 26 December 2015 by Don Diego Armando Maradona in favour of SATTVICA granting it the power to manage commercially the trademarks “MARADONA”, “DIEGO MARADONA”, “DIEGO Armando MARADONA”, “DIEGOL”, “LA MANO DE DIOS” and “EL DIEZ DIEGO”; ii) an agreement, undated, granting SATTVICA the authorisation to use the following trademarks: “Don DIADONA”, “DIEGOL”, “LA MANO DE DIOS” and “EL DIEZ DIEGO DIEGO”; iii) an agreement, undated, granting SATTVICA the authorisation to use the trademark from Don Arfranc.
The transfer was registered and published in the European Union Trademarks Bulletin on 28 January 2021.
Ruo PATENTES Y MARCAS, the representative of Diego Armando Maradona in relation to the trademark subject of the transfer, contested the registration requesting its revocation on the grounds that the documentation and authorisations submitted in its support were not suitable to substantiate the transfer.
The EUIPO upheld the requests of Ruo PATENTES Y MARCAS and notified the parties of the rectification of the registration, pointing out that the registration and the publication, had been made in error and should be considered null and void.
SATTVICA filed a second application for registration of the transfer of the EU trademark "DIEGO MARADONA" also supported by an undated licensing agreement issued by Don Diego Armando Maradona in its favour.
The transfer was registered and published in the EUTM Bulletin, but it was again contested by Ruo PATENTES Y MARCAS, that pointed out the lack of consent of Maradona's heirs, who had died before the application for registration.
Even on this second occasion, the EUIPO upheld Ruo PATENTES Y MARCAS' claims and declared the registration null and void.
SATTVICA filed an appeal against this decision, requesting it to be annulled and the registration of the second transfer to be allowed.
In its decision, the Board of Appeal rejected the appeal and confirmed that the second registration of the transfer of the European Union trademark no. 002243947 “DIEGO MARADONA” is null and void. An assignment of a trademark shall be valid only if it is made in writing and signed by both parties, except when it is a result of a judgment or a decision of the Office. Furthermore, under penalty of being declared null and void, an application for registration of a transfer shall contain documents proving that the assignment has actually taken place.
The lack of this documentation invalidates the application for registration of the transfer. The proprietor of the trademark, Don Diego Armando Maradona, had in fact died months before the application for registration of the assignment. Considering that the death of the proprietor of a European Union trademark has the immediate effect of triggering universal succession, the owners of the trademark are its heirs and therefore they are the only ones who can dispose of the trade mark in question.
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