Blog » LUXEMBOURG RULED: MESSI DRIBBLED PAST EVEN THE EUROPEAN TRADEMARK OFFICE
LUXEMBOURG RULED: MESSI DRIBBLED PAST EVEN THE EUROPEAN TRADEMARK OFFICE
30 September 2020
Messi hit the legal news again, this time not because of his tax issues. In September, the match between the EUIPO and the world-famous football player, which was ongoing since 2011, finally ended. Messi won the match, as the European Court of Justice ruled that because of his significant reputation, his name can be registered as a trademark despite the fact that it is similar to several earlier trademarks, which is otherwise a ground for exclusion. In our short article, we summarise the details of the case and the legal significance of the decision.
1. Messi or Massi? - Background to the case
Lionel Andrés Messi Cuccittini, known to the public simply as “Messi”, tried to register the logo of his clothing brand as an EU trademark in 2011, the brand was not surprisingly named after him, MESSI (see below). He filed the registration in the categories of clothing, footwear, gymnastics and sporting goods, among others.
The request was opposed by a Spanish trade mark holder, on the basis of the earlier word mark MASSI, which had been registered inter alia for clothing and shoes, bicycle helmets and gloves.
According to the opponent, the relevant public would confuse the sign 'Messi' with the already registered 'Massi', so that the sign Messi may not be registered under the EU Trade Mark Regulation, since there is likelihood of confusion with an earlier sign.
The EUIPO accepted the opposition, so Messi could not register his brand as EU Trademark. The persistent player wasn't about to give up without a fight and as a result of the remedies and by 2018, he had the wind in his sails, when the EU’s General Court annulled the EUIPO’s decision. However, the final match before the EU’s highest judicial forum, the European Court of Justice, was still to come.
2. The decision of the CJEU
The CJEU dismissed the appeals against the General Court's ruling, allowing Messi to finally register his own name as an EU trademark. The CJEU examined whether the sign Messi could be confused with Massi and, considering the circumstances of the case, concluded that the name Messi certainly rings a bell even to the less-informed public in the EU so the relevant public can distinguish the two brands.
3. Assessment of the decision
The main legal issue raised in the case was the impact of the reputation of the sign to be registered in terms of the likelihood of confusion between the conflicting signs.
Under the EU Trade mark Regulation, “the trade mark applied for shall not be registered if, because of its identity with, or similarity to, the earlier trade mark there exists a likelihood of confusion.”
If two signs happen to be similar, it is necessary to examine the likelihood of confusion. According to CJEU case law, the global assessment of the likelihood of confusion must be based on the overall impression produced by the signs. This includes the reputation of the earlier mark.
The main legal issues covered by the decision were:
a) Preliminary question: can the reputation of the sign for which registration is sought be taken into account?
The Trade mark Regulation recognizes reputation as an additional distinguishing factor on the side of the already registered, earlier trade marks, so, when a new trade mark is filed for registration, a well-known earlier trade mark may enjoy wider protection.
However, the present case concerned the reverse situation whereby Messi relied on the reputation of the sign to be registered, against the earlier mark.
Further developing the previous case law, the CJEU found that the reputation of the sign, as a further distinguishing factor, must also be taken into account in relation to the sign to be registered, when assessing the likelihood of confusion.
The above practice is significant because it avoids that a previously registered, lesser-known mark could in itself prevent the registration of a similar but well-known sign.
b) The role of reputation in relation to the likelihood of confusion:
In its examination of the likelihood of confusion, the CJEU found that Messi is widely known, and when the term Messi is seen or heard, the majority of "informed and reasonably attentive people who read newspapers, watch television, go to the cinema or listen to the radio" will think of the football player, ie. conceptually associate the football player with the sign.
In the presence of such a conceptual element, it is more difficult to confuse a sign compared to signs which, on a conceptual level, mean nothing to the individual (e.g. meaningless words). In the Court's view, Messi's reputation provides a strong conceptual dissimilarity in the perception of the conflicting signs which is capable of neutralizing the visual and aural similarity between them.
c): Ex officio consideration of reputation.
In its appeal, the proprietor of the Massi trade mark also complained that Messi had not proved the reputation of its sign when the EUIPO adjudged the opposition, and the appellate courts later established this fact ex officio. According to the CJEU, Messi's reputation is a well-known fact that can be learned from public sources. However, this creates uncertainty for litigants before the EUIPO: when should they submit evidence of their reputation, and when can they assume it is so well known that evidence thereof is not necessary?
The recent decision of the CJEU further develops the existing practice on the impact of reputation on the likeliness of confusion. The decision confirms the reputation of the sign must also be taken into account in relation to the sign to be registered, when assessing the likelihood of confusion. Furthermore, the reputation of a sign may result in a conceptual distinctiveness which precludes the likelihood of confusion between similar signs.
 Judgment of the Court (Tenth Chamber) of 17 September 2020 European Union Intellectual Property Office v Lionel Andrés Messi Cuccittini Case C-449/18 P
 Appeals were adjudged in case C-449/18. P., EUIPO vs. Messi Cuccittini and case C-474/18. P., J. M.-E. V. e hijos vs. Messi Cuccittini
 REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL is currently in force, the case was adjudged based on the previous regulation.
 Judgment of the Court of 24 June 2010 in case C ‑ 51/09 P; Becker / Harman International Industries, paragraph 37.
 Judgment of the Court of 12 Jan 2006 in case C-361/04 P; Ruiz-Picasso and others / OHIM
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