Balotelli and the de facto trademark “MB45” – footballer wins before the Court of Rome
The Court of Rome, IP Section, in the recent decision of September 6, 2021, declared the invalidity of the trademark “MB45” registered by an Umbrian pizza maker in 2014, also establishing illegitimate the use of the domain name “www.mb45.it”.
The decision comes at the end of a trial, that lasted almost six years, brought by the famous footballer Mario Balotelli, also known to the public by the pseudonym “MB45” which is obtained by combining the number of the jersey that he has continuously worn and the initials of his name. Since 2013, the sign “MB45” was also affixed to a model of shoe customised for the player by PUMA, which had acquired the rights of economic exploitation related to the footballer Mario Balotelli.
In 2015, the footballer learned that Mr. Gabriele Casagrande had requested in 2013 (and obtained in 2014) the registration of the national trademark “MB45” for class 25 (clothing, shoes, headgear). The trademark, together with the Community trademark, also registered by Casagrande, were then transferred to a Lithuanian company. Deeming such registration to be in breach of the rights of the trademark that had been in use for years, Mario Balotelli asked the Court of Rome to declare the trademark “MB45” null and void pursuant to art. 25 of the Italian Code of Intellectual Property and, pursuant to art. 19 paragraph 2 of the Italian Code of Intellectual Property, for having registered the same trademark in bad faith. Furthermore, the plaintiff asked the court to declare illegitimate the use of the domain name “www.mb45.it” again registered in bad faith.
Having appeared in Court, the defendant Gabriele Casagrande (together with the Lithuanian company) asked the court to declare the validity of the registered trademark and domain, contesting the pre-use and claiming to have duly registered the trademark taking inspiration from the tugboat of the Russian Navy Morsokoy Buksir, known as “MB45”, to produce a line of glasses, and not from the football player.
The defendant’s line of argument did not convince the Roman judges, who considered that the registration of the trademark, by Gabriele Casagrande, took place in violation of the provisions of Articles 8, 12 and 25 of the Italian Code of Intellectual Property. In particular, it was recognised that the pre-use of the disputed sign was determined by the “widespread establishment of the distinctive power of the sign, to be evaluated also in relation to the reference public (Court of Bari 14/05/2009)”. This is because the “MB45” sign is clearly recognisable by the reference football public, presumably composed of an audience of end users who follow the footballer’s social channels and are interested in news related to him.
Confirming the invalidity of the trademark, the Court of Rome has also declared the sign void pursuant to art. 19, paragraph 2 of the Italian Code of Intellectual Property, due to the bad faith of Casagrande at the time of the application of the registration of the trademark; most notably, the aforementioned application occurred just a few days after the dissemination of some news relating to the football player and bearing the sign “MB45”.
Considering the ascertained right to the pre-use of the de facto trademark, the Roman judges have also finally considered illegitimate the registration of the domain name “www.mb45.it”.