Messi is entitled to register his trademark: The CJEU upholds the General Court decision
On 17 September 2020, the Court of Justice of the European Union (CJEU) dismissed the appeals brought by the EUIPO and the holder of the MASSI trademark against the General Court decision confirming the validity of MESSI’s trademark registration (shown below) for sports equipment and clothing (see judgement in C-449/18 and C-474/18, available here in french and spanish).
The dispute originated in 2011, when the football player Lionel Messi filed an EU trademark application for the figurative sign MESSI. Mr Jaime Masferrer Coma filed an opposition against this application before the EUIPO, alleging a likelihood of confusion with his earlier trademark MASSI, registered for clothing, footwear and sporting goods for cycling.
In 2013 the EUIPO upheld the opposition and this decision was confirmed by the EUIPO board of appeal on April 2014. Messi therefore brought an action before the EU General Court (“GC”) for the annulment of the EUIPO’s decision. On April 2018 the GC upheld Messi’s appeal, considering that the football player’s reputation was capable of counteracting the visual and phonetic similarities between the two signs and of excluding the likelihood of confusion (see our comment to that decision here in this blog). The GC decision was finally challenged before the CJEU by both EUIPO and by the Spanish company J.M. – E.V. & hijos, i.e. the current owner of the MASSI trademark.
The CJEU, in dismissing the proposed appeals, agreed with the conclusions of the GC. The main subject of the CJEU’s judgement regards the relevance of the applicant’s reputation as a criterion for the assessment of the likelihood of confusion between the signs. In this respect, the CJEU stated that the GC had correctly considered that Lionel Messi’s reputation was one of the relevant factors to be taken into consideration for the purposes of establishing a conceptual difference between the signs MASSI and MESSI, capable of counteracting the similarities between the two signs. In fact, the applicant’s reputation may become one of the relevant factors in assessing the likelihood of confusion given that this reputation may influence the relevant public’s perception of the trademark.
In regard to the identification of the relevant public, the CJEU dismissed the EUIPO argument according to which the GC would have relied only on the perception of a part of the relevant public in order to rule out the likelihood of confusion between the two signs at issue. Instead the Court considered that the GC did correctly take into account the perception of the two signs MESSI and MASSI by the entire relevant public: in fact, Lionel Messi is not only known by football fans, but he is also known by the majority of the reasonably informed people who read the newspapers, watch TV or listen to radio programmes. Therefore the EUIPO had been wrong to conclude that the use of the MESSI sign could likely cause confusion with the MASSI sign on the part of the relevant public, given the wide notoriety of the Argentinian football player, not limited to the football world.
In summary, the CJEU agreed entirely with the conclusions of the GC, rejecting that the similarity between the two signs could give rise to any likelihood of confusion in the relevant public. Therefore, the CJEU dismissed both EUIPO and J.M. – E.V. & hijos’ appeals and confirmed the registrability of the MESSI sign.