Lionel Messi’s EU Trade Mark: how ‘Fame’ can change the conceptual comparison of marks*

A judgement issued by the EU General Court on 26 April 2018 ended opposition proceedings started in 2011 over Lionel Messi’s application to register the mark MESSI + Logo as an EU Trade Mark. The Barcelona striker can finally see his surname registered. The full judgement is available in French or Spanish here.: http://curia.europa.eu/juris/documents.jsf?num=T-554/14.

Background

Messi already owned a number of EU Trade Mark Registrations, in particular, for his full name LIONEL MESSI (EUTM Reg. 6353131), for LE0 MESS1 (stylised) (EUTM Reg. No. 9118852) and for his signature (EUTM Reg. Nos. 6353296 and 10394476), but the trade mark application in issue (EUTM Appl. No. 10181154) was just for the surname MESSI combined with a Logo:

Messi

The EUTM application sought registration of the mark in respect of goods in classes 9, 25 and 28. The most interesting legal arguments were submitted in relation to the application for ‘gymnastic and sporting articles not included in other classes’ in class 28 and on these goods we will focus our review.

In November 2011, Mr Jaime Masferrer Coma, owner of the earlier EUTM Reg. Nos. 414086 and 3436607 for MASSI filed an opposition to Messi’s above mentioned EUTM application on the grounds of similarity of the marks, identity/similarity of the goods and ensuing likelihood of confusion (Art. 8.1.b. EUTMR 2017/1001). The Opponent’s former EUTM Registration covered, in particular, ‘helmets for cyclists’ in class 9, ‘bicycles’ and other bicycle parts and accessories in class 12 and ’gloves, accident protective shoulder, elbow and knee guards’ in class 28.

During the opposition proceedings, Mr Masferrer Coma transferred ownership his marks to the company JM-EV e Hijos, so the final judgement is in fact against this company.

Analysis

During the opposition proceedings before the EUIPO, both Opposition Division and Appeal Board (hereinafter referred to collectively as ‘the EUIPO’) had ruled that Messi’s EUTM application should be rejected.

The EUIPO considered that the element MESSI in the footballer’s application was by far the dominant element and it was phonetically, visually and conceptually similar to the mark MASSI. In relation to the conceptual similarity, we note, in particular, that the EUIPO reasoned that the words MESSI and MASSI might be perceived by part of the public as Italian-sounding surnames, but that the largest proportion of consumers would not attribute any conceptual meaning to the two words.

The goods covered by the respective marks were considered identical in classes 9 and 25 and similar or very similar in class 28, and the EUIPO concluded that there was likelihood of confusion between the marks.

In overturning the EUIPO’s decisions, the EU General Court disagreed with the EUIPO on two key points:

Firstly, the EUIPO was wrong in assessing that for the largest part of the public the word MESSI would be devoid of any conceptual connotation and that the fame of the footballer would confer the word MESSI a meaning beyond that, perhaps, of an Italian surname only for the part of the public who has an interest in football, or in sport in general.

The EU General Court considered that Messi’s fame is such that Mr Messi is a public figure, who would be recognised by any average consumer who reads newspapers, watches TV, listens to the radio.

Secondly, the EUIPO erred in assessing the conceptual association between the word MESSI and the famous footballer against the general public. The analysis should have taken into account the relevant public. Indeed, in relation to the goods concerned, in particular sports equipment and clothing, even if not limited to football, the relevant consumers are not the general public, but average consumers who buy sports clothing and equipment.  It follows, that for this section of the public, it would be unlikely not to associate the word MESSI with the famous footballer.

Comment

Fame in a name can have a strong impact on the conceptual connotation of an otherwise unremarkable word and conceptual difference can in itself be sufficient to rule out the overall similarity of marks and/or likelihood of confusion between them.

Messi can now add another trade mark to his assets and sets a useful precedent for many celebrities whose name might be similar to third party prior registered marks.

Manuela Macchi, Partner, Keltie LLP, London, UK, who may be contacted by e-mail at ‘Manuela.Macchi@keltie.com’

* This article was first published on 15 May 2018 on IPCopy, the blog of Keltie LLP