Messi v Maradona: Legends Clash in Trademark

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Last December, the Argentina national team clinched their third World Cup title after defeating France in a thrilling final. This victory was even more special for captain Lionel Messi, as it gave him the one title that was missing in his much-storied career. Football fans have often pointed out the lack of a World Cup championship as the reason why fellow Argentinean icon, the late Diego Maradona, remained the superior player. Now, both players are on an even plate in the eyes of the public. Recently there was a completely different argument involving Maradona and Messi. This time, however, the stake wasn’t footballing honours but Trademark.

The centre of this dispute is trademarks that use the number 10 as the main theme of their design. The number has a long, storied history in football as various legends have worn it on their shirts, including Lionel Messi and Diego Maradona.

Before continuing the story, it’s important to note that neither man is directly involved in the dispute. Diego Maradona passed away in 2020, so it’s his heirs instead of him. Opposing them is not Messi himself, but a man who owns the Trademark of “Messi 10”, Gedney S.A.

The trademark in question, registered in class 41, is pictured below:

Gedney took issue when the heirs of Diego Maradona applied for the registration of a trademark described as “a digital memory platform in homage to Diego Maradona” designated in classes 9, 16, 19, 38 and 41:

Gedney S.A. filed an opposition against registering these marks, citing ownership of the trademark “MESSI 10”. He argued that the mark that Maradona’s heir’s file contains the letter M and the number 10, thus is too similar to the trademark that he owns and could risk confusion. He also further emphasized how the Number 10 is synonymous with Messi, whose image is widely recognized by millions throughout the globe.

But Gedney is not the only party to oppose Maradona’s heirs. Sattvica S.A., a company owned by Maradona’s former lawyer Matías Morla, also filed an opposition. Sattvica S.A. is the exclusive owner of an allegedly similar trademark, “EL 10” (The 10), as well as all of Maradona’s related registered trademarks. They argued that the trademarks filed by Maradona’s heirs, “M10 Memorial”, clearly evoke Diego Maradona and thus should not be granted.

Currently, the cases in question are still in early proceedings, and the parties still have to wait for a resolution from El Instituto Nacional de la Propiedad Industrial (the governmental organization regulating IP rights in Argentina). We note how peculiar it is that a trademark involving “Messi” is not owned by Lionel Messi himself. Trademark regulation sometimes would have rules against other individuals’ registries of celebrity names. In Indonesia, for example, Article 21 of Law No 20 Year 2016 on Trademark stipulates that Trademark applications involving the names of famous people would not be granted unless there is an agreement in place.

For further information surrounding Trademark and other regimes of IP, please contact us via: ambadar@ambadar.co.id

Source:

Lexology.com

Law No 20 Year 2016 on Trademark and Geographical Indication

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