From the Field to the Courtroom: ‘EL10 la Mano de Dios’ Faces Opposition from ‘MARADONA’

An opposition has been filed against the European Union trade mark application for the figurative mark “EL10 la Mano de Dios.” The opposition, based on the existing EUTM registration for the word mark “MARADONA,” invokes Article 8(1)(b) and Article 8(5) of the EUTM Regulation (EUTMR). Under Article 33(7) EUTMR, goods or services are not considered similar or dissimilar solely based on their classification under the Nice Classification. This forms a preliminary understanding for the assessment of similarity between the contested goods and services and those covered by the earlier “MARADONA” mark.

A preliminary comparison reveals that some contested goods and services are identical or similar to those covered by the “MARADONA” mark. For example, “games and playthings” in Class 28 and “education, entertainment, and sport services” in Class 41 are listed identically in both applications. Additionally, “computer application software featuring games and gaming” in Class 9 is similar to the “games” in Class 28 of the opponent’s mark, due to their complementary nature, shared producers, distribution channels, and target audience. However, certain goods in Class 11 have no relevant commonalities with the opponent’s goods and services, thus considered dissimilar.

The relevant public consists of average consumers who are reasonably well-informed, observant, and circumspect. The degree of attention varies depending on the nature, price, and conditions of the goods and services, with the general public showing average to high attention and business customers typically displaying high attention due to specific professional knowledge or expertise.

The earlier mark “MARADONA” is associated with the renowned Argentine footballer Diego Maradona. While the opponent claims high distinctiveness due to reputation, no supporting evidence was submitted within the relevant period. The contested sign “EL10 la Mano de Dios” is a complex figurative mark incorporating Spanish phrases “EL 10” (the number 10) and “la Mano de Dios” (the hand of God), alongside a hand depiction on a black background.

Visually and aurally, the signs differ significantly. “MARADONA” is a single, verbal element, while “EL10 la Mano de Dios” is complex and multi-elemental. These differences in structure, length, and components result in a lack of visual and aural similarity. Conceptually, for the part of the public familiar with football, both signs can link to Diego Maradona, creating a degree of conceptual similarity. However, for those unaware of this association, the signs remain conceptually different.

The global appreciation of the likelihood of confusion must consider all relevant factors, including the recognition of the earlier mark, the association that can be made with the registered mark, and the degree of similarity between the marks and the goods or services identified. The goods and services have been assumed identical and target the public at large and business customers, with a degree of attention that may vary from average to high. The intrinsic distinctiveness of the earlier mark is considered normal.

The only similarity between the signs lies in the conceptual aspect and only with respect to a part of the relevant public. While a part of the public could associate the signs as referring to the same well-known person, the differences in visual and aural aspects lead to a different global impression. Thus, even assuming identity between the goods and services, there is no likelihood of confusion or association among the relevant public. Consequently, the opposition on this ground must be dismissed.

Regarding the reputation ground under Article 8(5) EUTMR, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark. The opponent was given an opportunity to present supporting evidence but failed to do so within the specified time limit. Therefore, the opposition on this ground must also be rejected as unfounded.