The Transfer of Ownership of Intellectual Property Rights in the EU.
Diego Armando Maradona was one of the most distinctive football players of all time, not just for his professional abilities, but also his persona. In the context of his worldwide popularity, Diego Maradona decided to obtain trademark protection for his name on a global level in a variety of classes. As set out by our colleague Wiebeke in her article, seeking trademark protection for a name is recommendable when that name will be “used as a trademark in an economic context”. In 2020, Diego Maradona passed away, leaving a big question mark unanswered: How could these valuable ownership rights be transferred and to whom? This article will shed light on the requirements and pitfalls relating to a transfer of ownership of trademarks in the EU. To illustrate the importance of a well-drafted transfer agreement, the recent decision by the General Court of the European Union on the transfer of the EU trademark No 2243947 ‘DIEGO MARADONA’ will be referenced.
HOW CAN INTELLECTUAL PROPERTY RIGHTS BE TRANSFERRED?
There are three main situations that lean themselves to a transfer of ownership: assignment, inheritance, and merger. A transfer by assignment is only deemed valid if the assignment is supported by either a court decision, or a written and signed document by the parties involved. In the event of a merger, supporting documents that prove the merger, e.g. extracts from the trade register, are required. For a transfer of ownership through inheritance, the heirs should provide inheritance documentation when filing for a transfer.
THE TRANSFER OF MARADONA’S TRADEMARKS IN THE EU
After Maradona’s passing, his heirs had the right to request the transfer of Maradona’s active intellectual property rights before the respective intellectual property offices. Nevertheless, a company owned by Diego Maradona’s previous lawyer, Sattvica claimed to have been granted the trademark rights and requested for a transfer of ownership with the EUIPO in the form of a transfer by assignment. This type of transfer is only deemed valid if the assignment is supported by either a court decision, or a written and signed document by the parties involved that “duly establishes the transfer”.  In support of its claim, Sattvica provided two documents signed by Maradona that concerned the (commercial) use of the trademark. Initially the EUIPO accepted the request of transfer. Nevertheless, the provided documents did not establish the explicit transfer of ownership to Sattvica, but merely an authorization to use the mark. Moreover, the provided documents did not include the specificities, such as the trademark number of the intellectual property rights affected. Furthermore, the commercial use agreement ceased to exist legally under Argentinian law after the passing of Maradona.
When the heirs of Maradona were informed about the EUIPO’s recordal of the transfer of intellectual property rights to Sattvica, they filed for the invalidation of the said recordal. Thereupon, the EUIPO decided that the provided documents by Sattvica were indeed insufficient to constitute an acceptable assignment of the trademark and hence invalidated the recordal of the transfer. Discontent with this decision, Sattvica decided to file for annulment of the EUIPO’s decision with the General Court of the European Union. On the 7th of November 2023, the General Court sided with the EUIPO and confirmed that the provided documents did not fulfill the requirements and could therefore not lead to a transfer of intellectual property rights.
In principle, an irregularity notice does not mean that the transfer of trademarks or designs cannot be completed between the parties at hand. Whenever there is such an irregularity notice, the parties have the possibility to rectify the issues or mistakes made. In the case of Sattvica’s request, however, it was impossible to make any new agreement between the parties that could remedy the irregularities, as one of the parties had passed away and could therefore not sign the transfer agreement anymore. Consequently, the General Court clarified that Sattvica could not become the rightful assignee by providing a new transfer agreement. In this case, the heirs of Maradona thus were the only ones in the position to rightfully obtain the EU trademark ‘DIEGO MARADONA’.
WHAT SHOULD BE IN A WELL DRAFTED TRANSFER AGREEMENT?
While the validity of a transfer of ownership depends on national law, a well drafted assignment agreement should generally contain the following four essentials in order to be acceptable by the EUIPO. Firstly, the assignee and assignor have to be clearly established. This includes listing the address, full name, legal form and the company registration number (if applicable). Secondly, the agreement should specify the intellectual property rights affected. In addition, the agreement should specify a clear intent to transfer the mentioned intellectual property rights, as well as the actual (dated) confirmation of the transfer. And lastly, the agreement has to be signed by both parties. There is no need to specify, for example, the renumeration specifics within the transfer agreement. It is sufficient to state that the further details of the transfer, including the remuneration, have been agreed upon in a separate agreement, to the extent of course that such a separate agreement exists. This is particularly useful if some terms should remain confidential, since the agreement that is filed in support of the request to record the transfer of ownership will be made available to the public by the EUIPO.
Our team of experienced and knowledgeable legal professionals is committed to ensuring the meticulous creation of the necessary documents essential for your transfer of ownership.
For more information, please do not hesitate to contact us at firstname.lastname@example.org .