Football player Lionel Messi has won a nine-year trade mark dispute in relation to his trade mark application for ‘MESSI’ for sports equipment and clothing. Messi is the captain of Barcelona and his national team Argentina. The trade mark dispute went to the Court of Justice of the European Union (CJEU) who dismissed the joint appeals by the European Union Intellectual Property Office (EUIPO) and the owner of the MASSI word mark.

The CJEU handed down its judgment on 17 September 2020. The judgment is not available in English (see here). As a result, quotes provided in this article are from the CJEU English press release which can be found here.

BACKGROUND

In August 2011, Lionel Messi applied to register a figurative mark with his name in it. In November 2011, the trade mark application was opposed by Mr. Jaime Masferrer Coma, the owner of the word mark ‘MASSI’ on the basis that there was a likelihood of confusion between the two marks (see the marks below) pursuant to article 8(1)(b) of Regulation (EC) No 207/2009 (now article 8(1)(b) of Regulation (EU) 2017/1011).

The contested mark

Ownership of the MASSI word mark was subsequently transferred to a Spanish company, J.M.-E.V. e hijos in May 2012.

In June 2013, the EUIPO Opposition Division upheld the opposition for all of the contested goods in classes 9, 25 and 28 (see here).

The contested goods in the opposition were:

Class 9:                 Life-saving apparatus and instruments.

Class 25:               Clothing, footwear, headgear.

Class 28:               Gymnastic and sporting articles not included in other classes.

The Opposition Division found the goods to be identical and similar and the signs to be visually and aurally similar. The Opposition Decision held that the “differences are not sufficient to outweigh the similarities between the marks”.

In April 2014, EUIPO First Board of Appeal upheld the Opposition Division’s decision, highlighting that “the principle of imperfect recollection of marks by the consumers and the principle of interdependence (whereby a lesser degree of similarity of the marks may be offset by a higher degree of similarity of the goods)” may cause confusion (the Board of Appeal decision can be found here).

In April 2018, the General Court annulled the Board of Appeal decision “considering that the football player’s reputation counteracted the visual and phonetic similarities between the two signs and excluded any likelihood of confusion” (the General Court decision can be found here although it is not available in English).

CJEU DECISION

EUIPO and J.M.-E.V. e hijos lodged appeals against the General Court decision. The CJEU dismissed the appeals finding that the General Court had been correct in their decision.

The EUIPO appealed on the basis that the General Court only relied “on the perception of a significant part of the relevant public in order to rule out a likelihood of confusion”. The CJEU did not agree with the EUIPO’s objections and found that the General Court considered the whole of the relevant public.

J.M.-E.V. e hijos argued that the General Court should not have considered the reputation of the person when assessing likelihood of confusion. The CJEU held that “just like the reputation of the earlier mark, the possible reputation of the person who is applying for his name to be registered as a trade mark is one of the relevant factors for the purposes of assessing the likelihood of confusion, in so far as that reputation may influence the relevant public’s perception of the mark.”

The CJEU also highlighted that the General Court was correct in finding that Messi’s reputation as a famous footballer and public figure around the world “constituted a well-known fact” noting that this information was “available to the EUIPO at the time it adopted its decision and which it should have taken into account in its assessment of the conceptual similarity of the signs MASSI and MESSI”. The CJEU also commented on the application of the case of RuizPicasso and Others v OHIM C-361/04 P, stating, “that the assessment aiming to establish whether a sign has a clear and established meaning as far as the public is concerned” applies to both existing marks and trade mark applications.

This judgment demonstrates that the celebrity status of the trade mark applicant can be taken into account when assessing whether there exists a likelihood of confusion between an existing trade mark and a trade mark application.