With a judgement dated 26 April 2018, the General Court of the EU held that the famous Argentinian football player – and multiple Ballon d’Or winner, Lionel Andrès Messi, could register his mark ‘MESSI’ for sports and gymnastics clothing, footwear and equipment notwithstanding the opposition by the owner of a highly similar earlier sign “MASSI” registered for similar goods. The trade mark applied for is represented below:
This matter commenced back in November 2011 when Mr Messi’s trademark was opposed by Mr. Jaime Masferrer Coma who had an earlier trade mark registration for clothing, shoes and bicycle helmets, protective clothing and gloves. The Opposition Division upheld the opposition against Mr. Messi’s application on the basis of the similarity of the signs ‘MESSI’ and ‘MASSI’ and the similarity and identical nature of the goods. Mr. Messi lodged an appeal to the Board of Appeal of the EUIPO against this initial decision but the appeal was dismissed in 2014.
According to the Board of Appeal, there would be a likelihood of confusion between the two trade marks in view of the high similarity of the signs and of the goods covered (in particular, sports equipment and clothing, though not limited to the field of football). The Board of Appeal held that there was a likelihood of confusion because of the similarity between the dominant elements of the two marks which are almost identical visually and phonetically. Regarding the conceptual differences arising due to the fame of Mr. Messi, the Board of Appeal considered that this differentiation would only be perceived by the football and sport lovers ie: only by a part of the relevant public and not by the whole of the relevant public, and that this was not sufficient to result in a risk of confusion for the public.
The Sixth Chamber of the General Court, led by the Italian President, Judge Rapporteur Mr. Berardis, took a different view. The EU judges did not question the findings of the Board of Appeal concerning the visual and phonetic similarity of the signs, but they did challenge the assessment of the conceptual similarity and the resulting assessment of the likelihood of confusion between the two signs.
According to the General Court decision, Mr. Messi is a public personality well-known to the vast majority of the public. The average consumer “reasonably well informed and reasonably observant and circumspect” when purchasing sport-related (but not just football-related) clothing and accessories could only but associate the sign “MESSI” with the famous football player. Although it would be true that not all the public would know the details regarding his career and achievements, the General Court thought it highly unlikely that a part of the public would have never heard of him or know who he is.
The General Court considered that the fame of Mr. Messi did not need to be further demonstrated by the applicant with documentary evidence – which had not been done in a timely fashion during the administrative phase of proceedings before the EUIPO – as – according to the General Court – Messi’s name is so well known, that there is no need for further proof. Such fact could have been known and thus taken into account by the Board of Appeal when reaching its decision, thus it did not need to be invoked or supported by evidence by any of the parties even in the administrative phase.
The General Court concluded that the conceptual differences between the signs, linked to the fame of Mr. Messi, are so striking that they are able to neutralise the visual and phonetic similarities between the signs at issue. Thus, it affirmed that the Board of Appeal erred in considering that there was a likelihood of confusion and it annulled the decision of the EUIPO.
The Spanish company, JM-EV e hijos, current owner of the sign “MASSI” has two months to decide whether to bring an appeal against this judgement, limited to the points of law, before the Court of Justice.
This judgement recalls the “PICASSO” case (T-185/02 and appeal C-361/04 P) where the reference to the famous painter (whose heirs, who had licensed the use of the name to the car manufacturer Citroën, were the opponents), due to his fame, ruled out any conceptual similarity with respect to the contested DaimlerChrysler’s trade mark application “PICARO”, both covering similar goods which had nothing to do with art painting, namely motor vehicles.
Hence, according to the EU case law in question, famous persons’ names as trademarks seem to be double edged weapons when it comes to the likelihood of confusion test. On the one hand they can be very resistant to oppositions like in the recent “MESSI” case, but also, on the other hand, oppositions having famous persons’ names as their basis are not able to impede similar signs to be later registered, as in the “PICASSO” case.
It will be interesting to see how famous personalities will actually ride the wave of this EU case law – and whether an appeal is filed.