Maldini in Russia23 October 2020
The headline of this article might provoke amazement or concern among football fans. They might even wonder why Wikipedia missed this important event in the life of the famous footballer. The truth, however, is detailed below.
A Russian individual entrepreneur filed a trademark application No 2019706983 for “Maldini” in Class 43 for services in the hotel and catering business. The examiner rejected the application explaining that the claimed designation reproduces the name of a famous Italian football player Paolo Maldini. Hence, this designation is capable of confusing the consumer with regard to the person rendering the services.
The applicant appealed the refusal at the Chamber of Patent Disputes. The Chamber agreed that the claimed designation indeed reproduces a name of Italian origin. Many people have this name. In particular, one such person is Paolo Maldini mentioned in the official action of refusal. However, the claimed designation does not include any elements that would point directly to a specific person, e.g. his first name, profession, etc. by the side of the name. Therefore the name cannot be associated with a specific person. Besides, the former Italian football player, as was rightly observed by the applicant, may be familiar only to a limited number of consumers interested in football.
One cannot rule out that some Russian consumers may associate the claimed designation with the football player who is well known in the world of football. Nevertheless, hypothetical association of the footballer with the rendering of hotel services is improbable among consumers as football and the hotel/restaurant business are distinct areas. The board of the Chamber of Patent Disputes does not have any information about economic activities of Paolo Maldini in connection with hotels and restaurants or that he is known in Russia in connection with that business.
The documents submitted by the applicant testify to the use of the claimed designation in Russia specifically in connection with hotels and restaurants even before the date of filing the trademark application. Incidentally, the applicant owns domain names maldinihotel.ru and maldinihotel.com. There is much information on the internet about Maldini hotel in the city of Krasnodar in the south of Russia. There is also an online travel agency Booking.com where information is available on Maldini hotel in Krasnodar. Booking.com is a source of information widely known in every country, hence residents of many countries while looking for a hotel at Booking.com may come across Maldini hotel and assume that Paolo Maldini is somehow associated with the hotel in Russia.
Notwithstanding, the Chamber of Patent Disputes concluded that the claimed designation is a coined word serving to identify the services of the individual entrepreneur.
The decision of the Chamber of Patent Disputes is raising questions. Even if there are many people not interested in football, they will immediately think that the word Maldini (and the hotel in Russia) is somehow connected with Italy. Paolo Maldini is a retired football player so people may well associate the end of his football career with a change in his life in the direction of Russia. This is not an empty conjecture. There are other celebrities who chose to seek Russian citizenship, such as singer Natalia Oreira (