Messi is victorious not only on the football field, but also before the European Courts: the football player’s reputation creates a conceptual difference between MESSI and MASSI which counteracts the visual and phonetic similarities between the signs. As a result, the Court excluded any likelihood of confusion and allowed Messi to register his name as an EUTM.
Judgment in Joined Cases C-449/18 P EUIPO v Messi Cuccittini and C-474/18 P J.M.-E.V. e hijos v Messi Cuccittini of 17 September 2020 (Messi) [1]
Background
The Court of Justice of the European Union (CJEU) has recently confirmed, after nine year long legal proceedings, that the world famous football player Lionel Messi can register the MESSI logo shown below for clothing, footwear and various sporting articles in classes 25, 28 and 9. The registration of the mark MESSI (fig.) was opposed by a Spanish cycling company based on its European trade marks (EUTMs) for MASSI (word) covering various articles related to sports and cycling in classes 9, 25 and 28.
Now, do you think that the signs MASSI and MESSI are confusingly similar or that they may be seen as confusingly similar by part of the relevant EU public? Well, that’s not the conclusion of the European Courts. Rather, both the General Court (GC) and the CJEU - unlike the European Intellectual Property Office (EUIPO) - considered that the visual and phonetic similarities between MASSI and MESSI are outweighed by i) the huge and widely-accepted reputation of MESSI, and ii) the conceptual differences between the marks. Therefore, any likelihood of confusion between these signs was ruled out, even for identical goods.
CJEU decision
When reaching the conclusion that there is no likelihood of confusion between MASSI (word) and MESSI (fig.), the CJEU particularly held the following:
- The possible reputation of the person who is trying to register its name is one of the relevant factors for the purposes of assessing the likelihood of confusion, just like the reputation of the earlier mark, in so far as that reputation may influence the relevant public’s perception of the mark (para 47).
- The GC did not err in finding that Messi’s reputation constituted a relevant factor for the purposes of establishing a conceptual difference between the signs (para 48) and that the relevant public perceived the signs MASSI and MESSI as being conceptually different (although MASSI only has a meaning in Italian – translated as “rock”).
- The reputation of Messi is a well-known fact, which did not have to be substantiated and should have been taken into account by the EUIPO ex-officio when assessing the conceptual similarity between the marks (para 74).
- The assessment whether a sign has a clear and established meaning for the relevant public may relate as much to the earlier mark as it does to the mark applied (para 86).
- The negligible part of the relevant European public that would not directly associate the term MESSI with the name of the famous football player (para 35) was not considered sufficient to give rise to a likelihood of confusion, contrary to the EUIPO’s arguments that a non-negligible part of the relevant public would confuse the signs.
Impact of the CJEU decision
Messi confirms that not only the meaning of the earlier mark is relevant for the assessment of a conceptual similarity and a likelihood of confusion (as already confirmed in Case C-361/04 P, PICASSO/PICARO), but also the meaning and the potential reputation of the mark applied for (here MESSI), if it constitutes a well-known personal name that has a clear meaning for the relevant public. This finding is new, may be seen as contradictory to previous case law (see, for example, T-183/13, SKY/SKYPE, paras 47-50) and will likely result in a change of the EUIPO’s Guidelines, according to which the possible reputation of the mark applied for is entirely irrelevant for assessing likelihood of confusion [2], at least insofar as such reputation results into a specific meaning of that name.
Messi also raises the question if, as well as famous football players or other famous people can rely on the fame of their name to rule out a likelihood of confusion, can well-known corporate names rely on the same condition? One can certainly think of a number corporate brands that have a clear meaning, are as well-known as Messi and whose reputation could qualify as a well-known fact that doesn’t need to be substantiated.
Overall, Messi is certainly an interesting decision from a brand owner’s perspective and is a potentially useful case to rely on for registration purposes when it comes to conflicts of well-known personal names with similar prior rights. Moreover, it could open a Pandora’s box for a similar interpretation in relation to well-known corporate names.
However, when it comes to oppositions and enforcement based on such marks, it gets more tricky, as the mark’s repute could also serve to rule out a potential likelihood of confusion with other marks that try to imitate it (as in Picasso cited above). That being said, in such cases, equally famous names could still rely on reputation claims based on Article 8(5) EUTMR, so getting the brand registered in the first place appears to be far more important.
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