In a decision[i] that will be welcomed by sports celebrities everywhere, the European Court of Justice (CJEU) ruled that footballer Lionel Messi, may trade mark his name for use on his sports equipment and clothing brand.
The CJEU acknowledged that Messi’s outstanding reputation in the world of football and beyond meant that consumers would associate the name Messi with him, despite its similarity to the Massi brand name.
Messi originally applied to the European Union Intellectual Property Office (EUIPO) in August 2011 for registration of a logo that included his surname, MESSI, in a prominent position. However, this was met with opposition from a Spanish cycling company, which claimed that consumers would confuse the logo with their own pre-existing registered trade mark for the word MASSI. Massi is a cycling brand that sells cycling clothing, footwear and protective clothing. The initial challenge to Messi’s application was successful on the basis that the EUIPO felt there was a likelihood of confusion between MASSI and MESSI. However, subsequent appeals led to the case going to the CJEU.
CJEU decision – methods of assessing similarity between trade marks
The CJEU disagreed with the EUIPO’s assessment. It considered that there was no likelihood of confusion between the word mark MASSI and the mark applied for by Messi, which would form part of the logo for the footballer’s clothing and sporting brand. In considering the case the CJEU concluded that it was important to take into account the general public perceptions of each of the MASSI and MESSI marks, enabling it to establish whether or not the public would be able to easily tell the two brands apart. This assessment included examining the reputation of Lionel Messi, as the applicant for the trade mark.
Assessment of the reputation of Messi
The CJEU ruled that the reputation of the name Messi, as the surname of a famous football player and public figure known throughout the world, was a well-known fact that could be established using sources that are generally available to the public. It ruled that Messi was considered so famous that even non-football fans would know who he was and that the public was likely to associate the MESSI trademark directly with him, especially given his mark was to be put on sport-specific clothing. It also considered that as all such information relating to Messi’s reputation was available to the EUIPO at the time of its initial decision, these factors should have been taken into account when considering the conceptual similarity between MASSI and MESSI.
Relevance of decision
The CJEU’s decision in this case provides some clarity regarding the registrability of trade marks by famous individuals, and it confirms that the reputation of the individual may be taken into account in deciding whether the mark applied for is distinctive enough to avoid confusion with a similar existing registration. Celebrities hoping to register their name as a trade mark in the future will welcome the decision. However, there are still some questions unanswered, particularly in relation to the assessment of reputation. In this case, the assessment was clear on the basis that Lionel Messi is well known worldwide; however, where an application is made by a lesser known celebrity, it is unclear exactly how the court will approach the assessment of the likelihood of confusion. Indeed this case may lead to an increase in such trade mark applications as celebrities “test the waters”.
[i] Joined cases C-449/18 P EUIPO v Messi Cuccittini and C-474/18P J.M.-E.V. e hijos v Messi Cuccittini 17.09.20