On September 17, 2020, legendary footballer Leo Messi achieved an elusive goal that he had been pursuing for years. No, he did not finally win a World Cup championship for the Albiceleste. Rather, after a nearly decade-long struggle, he finally secured the right to market sporting goods and clothing under his eponymous trademark: Messi.

Lionel Andrés Messi Cuccittini had faced off against the European Union Intellectual Property Office. before the European Union’s Court of Justice, the EU’s top court, as the EUIPO appealed a decision that the EU’s General Court handed down on April 26, 2018. That decision in turn reversed a decision by the EUIPO to refuse registration to the trademark Messi had sought to register (in support of what he called “the official premium lifestyle brand of soccer legend Leo Messi”).

Messi had applied for the trademark nearly a decade ago, on August 8, 2011, to be used in categories such as clothing and gym equipment. On November 23, 2011, Jaime Masferrer Coma opposed the registration based on his registration of the trademark for “Massi” for clothing, shoes and sports headgear (registered on September 23, 2007 under 3436607) and for cycling equipment (registered on July 20, 1998 under 414086).

On June 12, 2013, Messi lost in an initial decision before the EUIPO and appealed. In a split decision, the EUIPO affirmed that judgment. Messi, persistent on the pitch and in the courtroom, filed yet another appeal, this time before the EU’s General Court on July 25, 2014, contesting the likelihood of confusion determination.

Messi won that appeal, but in July 2018, the EUIPO and the Massi trademark holder itself appealed to Europe’s highest court, the Court of Justice.

The Court of Justice’s main consideration (similar to a likelihood of confusion determination in the United States) would be whether the public would confuse the conflicting trademark—that is to say, mistake the one for the other, or make a connection between the conflicting trademarks and assume that the goods/services in question are from the same or economically-linked undertakings (likelihood of association). Moreover, under European law (as noted by the Court of Justice in its decision), “in order to conclude that there is such a likelihood of confusion, it is not necessary for that risk to exist for the entire relevant public. It would suffice for the said risk to exist for a not insignificant part of this public.”

The Court of Justice affirmed the General Court, which had rejected the EUIPO’s argument as a misunderstanding of the likelihood of confusion analysis. Rather than ask whether the public at large might confuse the marks, the court stated that the real test was whether consumers in the relevant categories might make that same mistake. The answer was a resounding no: Buyers of sports clothes and gym equipment were not plausibly likely to mistake Messi’s name for any other. The Atomic Flea, as he is sometimes known, was unique and simply too well-known for this type of confusion to occur.

Specifically, the court held, “[w]hile it was possible that a few consumers had never heard of Mr. Messi Cuccittini or remembered him, this would not be the case with the average, normally attentive, informed and savvy consumer who purchases items or sports clothing” (translated).

The bottom line was that the EUIPO failed to consider Messi’s fame among those who bought sporting goods and sports clothes, and that was reversible error. Moreover, even though Messi’s fame was not explored in the record before the court, it was essentially “judicially noticeable” given that it was generally known and uncontestably a fact.

The Court of Justice affirmed the General Court and handed Messi yet another trophy: his own mark, one that he had sought for nearly a decade and that could put him in that upper echelon of team-sport athletes famous enough to have a global brand (like “Air Jordan” for Michael Jordan and “TB12” for Tom Brady).

Takeaways

Athletes often run into situations where they hope to trademark terms that are inextricably linked to their own names or achievements, such as “Linsanity” for basketball player Jeremy Lin or “Johnny Football” for Johnny Manziel, but enterprising and opportunistic filers tried registering first (but failed).

This situation is a bit different because an apparel brand just happened to have a similar-sounding name to Leo Messi. There was no opportunism to blame, merely a coincidence. That said, Messi won because he was just too famous to be confused with anyone else. The same thing could happen in the U.S.

The moral for today’s athletes who long to have their own lifestyle brands? Run prior art searches and, if your name is close to an already-registered mark, be prepared to duke it out in court. The game plan appears to be: Get famous, and fast. So up the Q-Score (a metric that determines the public’s familiarity with a brand, celebrity, product or company) and you too can have the highest court in the land deem your name sufficiently famous to avoid confusion.

As for companies looking to register a product or service that sounds similar to an already-existing mark in your category: Being world famous and ubiquitous like Messi is a little less likely to win the day for you, to say the least, so be sure to run names to the ground before getting wedded to them. Because even arguably the greatest soccer player of all time had to fight for nine years to win his right to have the brand he deserves. Meanwhile, his quest for the elusive World Cup championship continues...