Messi scores trade mark by playing popularity card

Lionel Messi has taught the world many footballing lessons but his skills now extend off the football pitch and into the trade mark realm. He has shown that it is possible to successfully file a very similar trade mark if it is a known fact that you have a famous name and consequently the likelihood of confusion is reduced. This could have important repercussions for brand owners and celebrities alike.

Background
In August 2011, the well-known football player Lionel Messi applied to register the following EU trade mark, inter alia, for sports and gymnastics clothing, footwear and equipment:

In November 2011, Mr Jaime Masferrer Coma opposed Mr Messi’s mark claiming a likelihood of confusion with the EU word trade marks ‘MASSI’ registered, inter alia, for clothing, shoes, bicycle helmets, protective clothing and gloves.

The EUIPO upheld the opposition and dismissed Mr Messi’s subsequent appeal on the basis that there is a likelihood of confusion between the two marks. The EUIPO considered that the marks ‘MESSI’ and ‘MASSI’ are similar because:

1. their dominant elements are almost identical visually and phonetically; and
2. any possible conceptual differentiation will be made only by part of the relevant public.

Mr Messi did not accept the EUIPO’s decision as final and appealed to the General Court to attempt to have the decision annulled.

The General Court
The General Court conducted the similarity comparison and broadly agreed with the EUIPO in respect of visual and aural similarity. More specifically, it found that:

1. Visual similarity: the EUIPO’s decision is correct in that Mr. Messi’s trade mark is similar to the mark MASSI given its dominant element ‘MESSI’ is extremely similar to the prior mark  MASSI. However, it was wrong to consider that the EUIPO did not take into account the figurative element of the mark MESSI. In fact the EUIPO did consider the figurative element, however, when a mark is composed of verbal and figurative elements, the verbal element is more distinctive than the latter also given that the average consumer would refer more easily to the products by referring to the name of the mark rather than the figurative element. The figurative element here will be perceived as a mere ornamental element reinforcing the word element.
2. Aural similarity: the EUIPO’s decision is correct. The similarity of the words ‘MESSI’ and ‘MASSI’ is very high, even identical in some languages, such as English, French or Italian given that the only difference would be in the letters “e” and “a”.

However, the EUIPO came unstuck when it came to the question of conceptual similarity. The EUIPO’s view was that the words “MASSI” and “MESSI” are meaningless to most consumers. Consequently, the EUIPO decided that the relevant public would not perceive a conceptual difference between the marks MESSI and MASSI. The General Court disagreed.

The General Court decided that it was wrong for the EUIPO to conclude that Mr Messi only enjoys popularity among a public interested in football and sports. In the General Court’s view, Mr Messi is a public figure who is known to most reasonably attentive people who read the press, watch the news or the television and so on. The General Court concluded that a significant part of the public could in fact establish a conceptual association between the mark MESSI and Mr Messi.

Finally, the General Court considered the goods in issue which extended beyond football products to general sports articles and clothing. Although these items are not directly linked to Mr Messi’s day job, the General Court held that the average consumer of these goods would, in the vast majority of cases, directly associate the word “MESSI” with the famous footballer (rather than an Italian brand with a similar sound).

In reaching this conclusion, the General Court ignored the EUIPO’s criticism of Mr Messi for not producing evidence to show that the public would automatically associate the sign MESSI with the footballer. It appears that Mr Messi had been banking on his reputation being so well known that it could be found without adducing any evidence. He got lucky on this occasion but it is a risky strategy for future trade mark applicants and with the right evidence, he could likely have won against the opposition at first instance.

The General Court found that overall, the conceptual differences between the two marks are sufficiently high that they neutralise the visual and phonetic similarities. Consequently, they annulled the opposition and allowed Mr Messi to have his mark.

Comment
The General Court’s decision it is certainly another victory for Mr. Messi and for anyone with a famous name. However, it may open up a risky road where popularity can win an opposition with limited evidence and it may be hard to determine which other celebrities or international brands can meet the Messi threshold and get their marks granted based on what is essentially general knowledge. If we presume popularity, does this mean that the chances of registering your mark increase directly proportionately to your level of notoriety?

Given the questionable precedent that this sets as far as evidence is concerned, it may be that this decision is appealed again to the CJEU. For the time being we will continue to watch this space for any other similar, but conceptually different, cases.

This decision (T-554/14) is not yet available in English but for any Spanish and French readers it is available here.