As we continue to adjust to new restrictions introduced by the government as a result of the pandemic, the world of trade marks has been business as usual. In this blog, we discuss a recent decision relating to a high profile trade mark proprietor, Lionel Messi, who is widely regarded as one of the best footballers in the world.
The Court of Justice of the European Union (CJEU) recently dismissed appeals brought by the EUIPO and a Spanish company against the judgment of the General Court authorising Lionel Messi to register the trade mark ‘MESSi’ for sports equipment and clothing. The CJEU held that there is no likelihood of confusion between the word mark MASSI and a figurative sign containing the word MESSi.
In August 2011, the Argentinian footballer Lionel Messi filed an application with the EU Intellectual Property Office (EUIPO) for registration of a figurative sign containing the word ‘MESSi’ as an EU trade mark for, amongst other things, sports and gymnastics clothing, footwear and equipment.
In November 2011, a notice of opposition was filed alleging a likelihood of confusion with EU word marks for MASSI registered, amongst other things, for clothing, footwear, cycling helmets and protective clothing and gloves. This opposition was upheld by the EUIPO in 2013, and Mr Messi subsequently lodged an appeal. In April 2014, the EUIPO dismissed the appeal on the basis that there was a likelihood of confusion between the signs MASSI and MESSi.
Mr Messi then took the case one step further by bringing an action before the General Court of the European Union for an annulment of the EUIPO’s decision. On 26 April 2018, the General Court annulled the decision of the EUIPO, having considered that Messi’s reputation counteracted the visual and phonetic similarities between the two signs and excluded any likelihood of confusion.
Following that decision, both the EUIPO and the company J.M.-E.V. e hijos (the company to whom the rights in the MASSI marks had been transferred in May 2012 from Mr Jaime Masferrer Coma), lodged appeals with the CJEU.
The CJEU dismissed both appeals. The EUIPO claimed that the General Court had relied only on the perception of a significant part of the relevant public in order to rule out a likelihood of confusion, but the CJEU considered that the General Court took into account the perception of the marks MASSI and MESSi by the whole of the relevant public. The CJEU went on to rule that the EUIPO had been wrong to conclude that use of the MESSi mark for the goods registered could give rise to a likelihood of confusion with the MASSI marks on the part of the relevant public.
J.M.-E.V. e hijos claimed that the General Court had erred in law by considering that, when assessing the likelihood of confusion, account should be taken of the reputation of the person (Lionel Messi), whose name is the subject of an application for an EU trade mark. The CJEU considered that the possible reputation of the trade mark applicant applying for his name to be registered as a trade mark is a relevant factor for the purposes of assessing the likelihood of confusion, in so far as his reputation may influence the relevant public’s perception of that mark. The CJEU therefore dismissed J.M.-E.V. e hijos’ claim that the General Court had erred in considering that Mr Messi’s reputation was a relevant factor when establishing a conceptual difference between MESSi and MASSI.
In the proceedings before the General Court, the EUIPO had tried to argue that even if Lionel Messi was very well known, he had not adduced evidence of his reputation during the opposition proceedings, and so consequently his reputation could not be taken into account. However, the CJEU agreed with the General Court that the question of Messi’s reputation should have been taken into account by the EUIPO when assessing the conceptual similarity of the marks, because his reputation: (i) is a well-known fact that is likely to be known by any person and ascertained from generally accessible sources, (ii) doesn’t need substantiating and (iii) would have been available to the EUIPO at the time of its decision.
The decision of the CJEU shows that even if signs have a high degree of visual and aural similarity, strong conceptual dissimilarity may suffice to prevent a finding of likelihood of confusion. It confirms that, just as the reputation of the earlier mark is relevant for the assessment of conceptual similarity and likelihood of confusion, the reputation of a trade mark applicant whose name is to be the subject of the trade mark is also a relevant factor, on the basis that the reputation of that applicant may influence the relevant public’s perception of the mark.
While the CJEU’s decision should give some comfort to well-known public figures seeking, in good faith, to secure trade mark protection for their names, it remains to be seen whether well-known corporate brands will also be able to use a similar argument where the reputation of their brand is a well-known fact that doesn’t need to be substantiated.