The six time Ballon D'Or winner, Lionel Messi, has won a nine year legal battle, allowing him to register his surname as an EU trade mark. The immense reputation of the footballer was sufficient to create a conceptual difference between the marks MESSI and MASSI.
The case has confirmed that the reputation of the trade mark applicant is relevant to the assessment of both conceptual similarity and likelihood of confusion, provided it constitutes a famous name.
It will be interesting to see how this case is applied. Messi is arguably one of the most famous footballers and, indeed, individuals in the world. Whether an individual's fame is a matter of common knowledge (thus obviating the need to provide reputational evidence) is likely to be a key point for dispute in future cases. Unfortunately, the judgment provided no guidance as to the criteria for assessing the fame of the applicant. It will also be interesting to see whether the case is extended beyond the realm of famous individuals to well-known corporates.
In 2011, Messi applied for the EU mark in classes 9, 25 and 28 (including for sports and gymnastics clothing, footwear and equipment). The mark was opposed by a Spanish cycling company with earlier rights in the word mark MASSI in class 25 for clothing, footwear, cycling helmets, protective clothing and gloves.
The EUIPO upheld the opposition and Messi’s initial appeal against that decision was dismissed on the basis that the registration of MESSI would lead to a likelihood of confusion when compared to the earlier mark, MASSI, given the similarity between the marks and the identity of the goods.
The decision was appealed to the General Court, where it was reversed. It was further appealed to the CJEU which has now confirmed the General Court's ruling, allowing Messi to register his trade mark. Whilst the judgment is currently only available in French and Spanish, the CJEU has published a press release explaining the decision.
The CJEU Decision
The CJEU held that the visual and phonetic similarities between MASSI and MESSI were outweighed by the conceptual differences between the marks and the widely-accepted reputation of MESSI.
In reaching the decision the CJEU held that:
- The reputation of Messi as a world-famous footballer constituted a matter of common knowledge which did not need to be substantiated by evidence;
- The small proportion of the relevant public that would not associate MESSI with the name of a famous footballer was considered to be insufficient to give rise to a likelihood of confusion; and
- The reputation of the individual applying to register their name is relevant to the assessment of a likelihood of confusion and to the assessment of conceptual similarity.
This ruling follows the 2010 case of Barbara Becker (C 51/09P), in which the CJEU held that account must be taken of whether the person who applies to register their name is well known, since their fame will influence the perception of the mark by the relevant public. In that case, German actress and model Barbara Becker succeeded in defeating an opposition and was able to register the trade mark BARBARA BECKER.