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After initially trying to trade mark his name in 2011, Lionel Messi, Barcelona striker and football legend, has finally succeeded.
Messi’s original application to trade mark ‘Messi’ for sports and gymnastics clothing, footwear and equipment was opposed by Spanish cycling brand, ‘Massi’, on the basis that there was a likelihood of confusion with the ‘Massi’ registration due to the similarity of the marks.
In 2013, the EU Intellectual Property Office’s (‘EUIPO’) decided that the marks were too similar due to their one letter difference. Messi appealed but the EUIPO dismissed his appeal in 2014 on the basis that the marks were almost identical and only part of the relevant public (i.e. football fans) would make a ‘conceptual differentiation’.
Not one to give up, Messi appealed again to the General Court of the European Union (‘the Court’) for the decision to be annulled.
On 26 April 2018, the Court ruled in favour of Messi and annulled the EUIPO’s decision. The Court acknowledged the visual and phonetic similarities between the marks but considered the EUIPO’s decision that Messi’s reputation would only be known by part of the relevant public to be flawed.
In the Court’s view, the average consumer of the goods for which trade mark protection was sought would directly associate, in the vast majority of cases, the ‘Messi’ mark with the football player. The Court therefore ruled that ‘the football player’s fame counteracts the visual and phonetic similarities’ with Massi. As a result, the degree of similarity between the marks was not considered sufficiently high to lead the relevant public to believe that the goods produced under the Messi mark originated from ‘Massi’ or that the two brands were ‘economically linked undertakings’. Ultimately, the Court’s view is that Messi is now sufficiently famous with consumers of sportswear and sports equipment that the use of ‘Messi’ would only be associated with the footballer.
Clearly Messi was advised of the benefits of trade mark protection, hence his seven year battle. This success means that Messi can now enjoy registered trade mark protection for his goods and would not be required to overcome the hurdles of ‘passing off’ should his unregistered mark have been infringed.
For more information, please contact Charlotte Bolton.
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