Too famous to be confused – Barcelona superstar Lionel Messi secures come from behind victory over owner of MASSI trade mark
Football megastar, Lionel Messi ("Messi"), has been successful before the General Court of the European Union ("GC) in the latest round of a six and a half year legal battle to register the logo featuring his name shown below as a European Union Trade Mark ("EUTM") for sporting equipment and clothing.
Messi applied to the European Union Intellectual Property Office ("EUIPO") to register the logo above bearing his name on 8 August 2011 for a range of goods in Classes 3, 9, 14, 16, 25 and 28. Full details of Messi's EUTMs for the above logo (there now being two due to a divisional application filed in November 2014) can be seen here and here. Messi's application was accepted and published for third parties to oppose on 23 August 2011.
On 23 November Mr Jamie Masferrer Coma and, latterly, J.M.-E.V. e Hijos S.r.l. who took assignment of Mr Masferrer Coma's rights in May 2012 (the "Opponent"), opposed the registration of Messi's application for "life-saving apparatus and instruments" in Class 9, "clothing, footwear, headgear" in Class 25 and "gymnastic and sporting articles not included in other classes" in Class 28. The opposition was filed on the basis that the Opponent believed there was a likelihood of confusion between Messi's application and the Opponent's two earlier registrations for MASSI which between them cover clothing, shoes, bicycle helmets, protective clothing and gloves amongst other goods in Classes 9, 25 and 28.
The EUIPO and Board of Appeal decisions
The EUIPO found in the Opponent's favour at first instance as they concluded that there was a likelihood of confusion between the marks. Their view was that the dominant elements of the two marks, namely MASSI and MESSI were nearly identical visually and phonetically and covered identical or, at the very least, highly similar goods. The EUIPO did consider the conceptual comparison between the two marks and found that in relation to the part of the public that associated the marks with different meanings (the two marks were found to have various meanings in different EU Member States) the marks were not conceptually similar. For the remaining part of the public, they found that neither sign conveyed any meaning and that the marks therefore had no concept in common. This reasoning was confirmed by the Board of Appeal upon appeal by Messi and the appeal was dismissed.
Dissatisfied with the decision, Messi appealed to the GC.
General Court decision
The GC annulled the EUIPO's decision and ruled that Messi's application should be allowed to proceed to registration. The GC did not have an issue with the EUIPO's decision in respect of the visual and phonetic similarities between MASSI and MESSI, but believed the EUIPO had erred in the conceptual comparison of the marks in three aspects:
- The GC found that it was wrong of the EUIPO to consider that Messi's reputation only extended to the part of the public who was interested in football or sport in general. The GC held that Messi is a well-known public figure generally due to his presence on television and regular discussions surrounding him in the media in the EU;
- The GC said the EUIPO should have examined whether a significant part of the public would not make a conceptual comparison between MESSI and the name of the famous footballer; and
- The GC said the conceptual comparison had to be framed in terms of the goods covered by the marks at issue, in particular sports equipment and clothing, even if those were not limited to the sports equipment and clothing for football. The GC held it was highly unlikely that the average consumer of sports equipment and clothing would not, in the vast majority of cases, directly associate the term MESSI with the famous footballer.
The GC's conclusion was that, even though the marks MASSI and MESSI were similar overall, the conceptual differences counteracted the visual and phonetic similarities. The GC believed that a significant part of the relevant public would associate MESSI with the famous footballer and would therefore view the term MASSI as conceptually different. The GC ruled that the degree of similarity between the two marks was not high enough to lead the relevant public to believe that the goods at issue came from the same undertaking or economically linked undertakings. Consequently the GC found the EUIPO was wrong to refuse Messi's application.
The GC's decision may be appealed to the Court of Justice of the European Union so we shall wait to see if this is the end of the matter, or if the Opponent tries to take the matter to a penalty shootout.
This very much appears to be a case of 'too famous to be confused' and is likely to be a defence that is available to only a few businesses or personalities. However, this does highlight the importance of carefully considering who your relevant public is. Successfully framing your relevant public to your advantage may make it more likely that you will be able to argue you are 'too famous to be confused' amongst that select group. The case also highlights that marks may be visually and phonetically similar, but that there might be ultimately no likelihood of confusion due to conceptual differences between the two marks.
We are sure this trade mark win ranks right up there for Messi with all the La Liga, Copa del Rey, Champions League and countless other awards and accolades he has achieved throughout his career.