Lionel Messi is entitled to register his trademark, according to the General Court

On 26 April, the EU General Court (case T 554/14) upheld the appeal in which the well-known football player Lionel Messi challenged the European Union Intellectual Property Office’s (EUIPO) decision rejecting his application for the registration of the “MESSI” trademark shown below.

In essence, the player had filed an application for EU trademark registration for classes 9, 25 and 28. The holder of the EU word trademark “MASSI”, previously registered for the same classes, objected to this request. The EUIPO Opposition Division upheld the opposition, and this decision was confirmed by the EUIPO First Board of Appeal before which Messi had appealed. Hence his further appeal before the General Court.

In the decision at issue, the Court first confirmed the identity or similarity between the products covered by the two trademarks, as well as the phonetic and visual similarity between the latter, which was considered not excluded by the figurative element consisting of the stylised M included in the MESSI trademark. However, departing from the EUIPO decisions, the Court noted the existence of a marked conceptual difference between the signs, given precisely by the reputation of the player.

In this regard, the Court emphasised that the Board of Appeal erred in stating that the reasonably careful consumer would not assign a precise conceptual meaning to either of the two marks at issue, and would therefore not see any conceptual difference between them. On the contrary, the Court said, Lionel Messi is a public figure known by the majority of reasonably informed people who read the newspapers, watch the news or listen to radio programmes, given that such media often speak of him. As a consequence, the majority of the public will associate the MESSI sign with the well-known footballer, especially considering that the products covered by the trademark are sports items and clothing.

The conceptual difference between the two signs is therefore such, continued the decision, to neutralise the visual and phonetic similarities and exclude any likelihood of confusion between the two trademarks, which likelihood is required by art. 8 (1) (b) EU Regulation no. 207/2009 for the subsequent trademark to be excluded from registration following opposition by the earlier trademark owner. Hence the annulment of the EUIPO decision challenged by the football player.