Messi scores one on the trade mark pitch
Like many famous athletes, Lionel Messi has protected his own name through trade marks. In 2011 he applied for the figurative mark (above left) containing his last name written in a stylised way in combination with a logo element. Not surprisingly, the mark was applied for in – inter alia – goods in class 25 (clothing, footwear and headgear).
Messi’s application was opposed by Jaime Masferrer Coma, owner of several EUTMs for MASSI (the "Earlier Mark") registered for - inter alia - clothing, footwear, cycle helmets and cycling gloves. Coma argued that the word element MESSI would lead to a likelihood of confusion when compared with his MASSI marks given the similarity between the two and the identity of the goods. EUIPO upheld the opposition and Messi’s appeal against that decision was dismissed.
However, Messi persevered and finally convinced the General Court to annul EUIPO’s decision. The General Court agreed with the EUIPO that the Earlier Mark and the Application are visually and aurally similar to an average degree but it took a different view on conceptual similarity, taking into account Messi’s well-known status:
“The Court finds that it is wrong to consider that the reputation enjoyed by Mr Messi concerns only the part of the public which is interested in football and sport in general. Mr Messi is, in fact, a well-known public figure who can be seen on television and who is regularly discussed on television or on the radio.” (quote from EUIPO press release)
According to the General Court, EUIPO also did not examine properly if a significant part of the public indeed would not make an association with the famous football player when being confronted with the Messi application. All in all, the General Court found it highly unlikely that anyone buying sporting gear and confronted with the mark Messi will not make a connection with the famous football player.
As a result, the General Court held that, despite the visual and aural similarities, the conceptual differences because of Messi’s status as a famous football player outweigh these similarities. Therefore, the decision of EUIPO was annulled. Messi’s trade mark application will finally become a registered trade mark if the owner of the Earlier Mark does not appeal.
The General Court’s decision is an interesting one for athletes, celebrities or other publically known figures in particular as many existing trade marks often consist of family names or other words that coincidentally are identical or similar to the first or last name of an athlete, celebrity or other person who becomes publically known after the existing trade mark was already registered by the third party. The General Court’s decision now makes clear that such older trade mark rights cannot always be used to prevent famous people from registering their own name as a trade mark because the conceptual differences may be sufficient to overcome the earlier trade mark.
In Messi’s case, even the use of only his last name was sufficient to overcome the opposition. In many cases the level of fame will not be anywhere near Messi. However, using one’s first and last name together in a trade mark application will probably lead to an even bigger conceptual difference with an earlier mark. When, for example, an athlete with the name John Hermes becomes the next Usain Bolt, registering a mark in class 25 could still be possible despite the existence of the luxury brand Hermes.
The same will probably be even more relevant in trade mark infringement matters where the conceptual difference in given circumstances (e.g. using first and last name together) could mean that there is no infringement at all. The likelihood of confusion in such matters could also be taken away by using one’s full name in combination with another trade mark (e.g. John Hermes signs a contract with Puma and only uses his name on Puma products); in line with the General Court’s decision on MESSI such use could increase the conceptual differences with an earlier trade mark.
Case Ref:T-554/14
