El Pelusa turns prickly (2)

In our earlier blog we discussed the opposition between Maradona's former lawyer and a United Arab Emirates company.

This company had filed a cartoonish image of Maradona in the European Union with his Italian nickname Dieguito above it. The opposition was based on the word mark MARADONA.

It was interesting to hear how the European trademark office (EUIPO) would handle this opposition: is there use of MARADONA as a trademark, and if so, is only a conceptual similarity sufficient to assume confusion?

Now, there is a decision. First, it’s worth noting that before his passing, Maradona granted a license for his portrait to the applicant of the EU trademark. This means that both the opponent and the applicant hold licenses related to Maradona’s intellectual property rights. Whether this is legally sound is outside the scope of the opposition, and as such, the EUIPO does not delve into it further.

Is there use as a trademark?

Interestingly, the use of the earlier mark MARADONA was not contested during the opposition proceedings as the applicant did not request or challenge proof of use. However, this issue was addressed anyway because the opponent invoked the reputation of the MARADONA mark.

As a result, the EUIPO was required to review the submitted evidence to determine whether the MARADONA mark could be considered a well-known trademark. The office is strictly bound by the evidence provided, which included a licensing agreement, a list of trademarks, and photos of products showing the word Maradona. Regarding these products, the EUIPO noted that they primarily refer to Maradona as a footballer. But a trademark indicating the origin of goods or services? Not quite. Furthermore, it remains unclear whether these products were ever actually sold.

 The remaining evidence also failed to establish the mark’s reputation: there were no revenue figures, no third-party statements confirming the fame of the trademark, and no market shares were provided. In short, the claimed reputation of the MARADONA mark was not proven.

 Similarity between Dieguito and Maradona

The opposition was also based on the ground of “likelihood of confusion”. In order to establish a risk of confusion, the marks must be sufficiently similar. But can that be the case here, given that the words "Dieguito" and "Maradona" do not visually or phonetically resemble one another?

The EUIPO determined that, for at least part of the relevant public, there is a conceptual similarity since both terms refer to the same footballer.

Is conceptual similarity enough to establish confusion? No, the EUIPO concluded. The conceptual similarity was not striking and the differences between the marks were too significant. As a result, the opposition was rejected.

This case underlines the importance of robust evidence when invoking a trademark’s reputation or claiming likelihood of confusion. While conceptual overlap might play a role, it’s rarely sufficient on its own to win an opposition.

Author: Arnaud Bos

Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.