The EU trademark MESSI filled by the football player Lionel Messi, combined, with TM № 010181154 may be registered after being refused by the Opposition Division (OD) of the European Union Intellectual Property Office (EUIPO) with a decision upheld by the Board of Appeals (BoA) due to likelihood of confusion with earlier marks MASSI.
Dispute history
In August 2011, Lionel Messi applied for registration of the EU figurative mark “MESSI” for goods of classes 9, 25 and 28. On 23.11.2011 an opposition was filed against the registration of the mark based on earlier word marks MASSI, registered for goods in classes 9, 25 or 28, pursuant to Article 8 (1) (b) CTMR. The Opposition Division granted the opposition with a decision subsequently upheld by the Board of Appeal.
According to the BoA decision, there is likelihood of confusion between the word marks MASSI and the figurative mark of Lionel Messi MESSI due to the identity or similarity of the goods and the similarity of the signs. It is considered that the marks are similar, since their dominant elements, consisting of the words ‘massi’ and ‘messi’, are almost identical visually and phonetically, and that any conceptual differentiation will be made only, if at all, by some of the relevant consumers.
Lionel Messi has appealed to the EU General Court, which has upheld the appeal. The General Court held that the BoA finding of conceptual comparison of the signs was incorrect. According to the General Court, Lionel Messi is recognized worldwide as a famous footballer and is a celebrity who is known to the majority of relevant users, as his name is well known, which circumstance BoA had to take into account. The Court found that it was unlikely that the average consumer would, in most cases, associate the term ‘MESSI’ with an Italian mark and not with the player’s name, and that the signs were thus conceptually distinctly different. The General Court concluded that, despite the similarity or identity of the goods, it was a fact that the essential conceptual differences counteracted the visual and phonetic similarities, so that the degree of similarity between the signs was not sufficient to establish the likelihood of confusion.
EUIPO and the opponent appealed against that decision to the Court of Justice of the European Union, which dismissed both actions on the following grounds:
In the context of the conceptual comparison of the signs, the General Court was right to hold that, while acknowledging that it is possible that several consumers had never heard of Mr. Messi Cuccini or had never remembered hearing of him, this this would not be the case for the normally attentive, well-informed average consumer who has purchased articles or sportswear from the goods applied for registration. Thus, the Court has accepted that only a small part of the relevant audience will not directly associate the word ‘messi’ with the famous football player. In the context of the global assessment of the likelihood of confusion and in particular the possibility that the conceptual differences between the signs counteract the visual and phonetic similarities of these signs, the Court of Justice has confirmed that Messi’s reputation is such that not only consumers interested in sports, will make a connection between the term MESSI and the footballer’s name.
Therefore, in the light of the general public’s perception of the marks, the Court found that BoA had erred in finding that there was likelihood of confusion between the two marks. The Court in fact held that the reputation or recognition of the earlier mark must also be taken into account in assessing the likelihood of confusion. However, it must also be taken into account whether the person who wishes his name to be registered as trade mark is well known, as this factor can obviously influence the perception of the trade mark by the relevant public.
The judgment of the Court of Justice of the European Union is final.
Source: European Union Intellectual Property Office https://euipo.europa.eu/eSearchCLW/#basic/*/09%2F09%2F2020/09%2F10%2F2020/number/