Introduction
Facts
Comment


Introduction

Just a few days after Argentina won the World Cup for the third time in Qatar, the Argentine media rekindled the classic rivalry between stars Diego Maradona and Lionel Messi, but this time in relation to an apparent IP dispute.

Although the media referred to the existence of a cease-and-desist letter, and even a lawsuit, between Maradona's heirs and Messi, the conflict was really about an opposition against the registration of a new trademark. Moreover, Messi was not even a direct party to the dispute.

Facts

The heirs of Maradona applied for the registration of the trademark M10 MEMORIAL (Figure 1) to identify goods and services in classes 9, 16, 19, 38 and 41.

Figure 1: M10 MEMORIAL trademark

Specifically, the trademark seeks to identify a digital memory platform in homage to Maradona.

Gedney SA filed an opposition against the registration of the mark, invoking its ownership of the trademark MESSI 10 (Figure 2) in class 41.(1)

Figure 2: MESSI 10 trademark

The opponent argued that:

  • the number 10 identified Messi;
  • Messi was a highly recognised and famous name throughout the world; and
  • the mark on which the complaint was based, which had been widely used to identify various goods and services, contained the letter "M" and the number 10.

Gedney thus requested the rejection of the application filed by the Maradona family, arguing that the marks could cause confusion among consumers regarding the origin of the goods or services.

Messi was not involved in the opposition against the application filed by Diego Maradona's heirs. The trademark MESSI 10 is managed by Gedney; Gedney pursued the complaint directly. Messi owns over 40 trademarks in Argentina, but none of them include the number 10.

Sattvica SA, a company owned by Matías Morla, Maradona's former lawyer, also filed an opposition against the registration of the M10 MEMORIAL trademark. Sattvica argued that:

  • the trademarks clearly evoked Maradona; and
  • Sattvica was the exclusive owner of the trademark EL 10 and of all Maradona's trademarks.

Comment

The oppositions filed by Gedney SA and Sattvica SA against the trademark (and design) M10 MEMORIAL in classes 9, 16, 19, 38 and 41 by the heirs of Diego Maradona are still at a very early stage of the proceedings. It is unlikely that the National Institute of Intellectual Property (INPI) will resolve the issue before at least mid-2024. The decision on the merits may be appealed before the National Court of Appeals for Civil and Commercial Matters.

For further information on this topic please contact Paula Galván at Ojam Bullrich Flanzbaum by telephone +54 11 4549 4900 or email ([email protected]). The Ojam Bullrich Flanzbaum website can be accessed at www.ojambf.com.

Endnotes

(1) Registration No. 3081591.