MESSI vs. MASSI – Lionel takes three points before the CJEU

On Thursday 17 September 2020 the Court of Justice of the European Union handed down its judgment in a trade mark dispute dating back to 2011 involving Lionel Messi, the iconic FC Barcelona footballer, and Massi, a Spanish cycling company. Upholding the General Court’s original April 2018 decision, the CJEU agreed with the General Court’s conclusion that there exists no likelihood of confusion between the word mark MASSI and Lionel Messi’s figurative logo mark which contains his surname (see below).

The dispute originated with Lionel Messi’s application for protection of his personal logo in 2011. Messi filed two applications, one of which (applied for in respect of ‘Clothing, footwear, headgear’, ‘Games and playthings’ and ‘Gymnastics and sporting articles not included in other classes’, amongst other things) was opposed by a Spanish cycling company on the basis of their earlier word marks for MASSI (registered in respect of clothing and shoes, amongst other things).

The original opposition succeeded before the EU Intellectual Property Office, and later before the EUIPO’s Board of Appeal, the latter of which concluded that the opposition was wholly justified on the basis that “’MESSI’ and ‘MASSI’ are meaningless words for most consumers and the conceptual dissimilarity based on the fame that Lionel Messi enjoys among football fans only concerns part of the public, who is interested in football and sport in general”. The Board of Appeal further rationalised that “there are no elements in the file suggesting that the mark ‘MESSI’ will be conceptually associated to the football player by all the relevant consumers”, thus casting doubt over the size of the reputation amongst the general public commanded by the footballer.

The case was appealed and came before the General Court, who annulled the Board of Appeal’s decision. The General Court found the lower court’s analysis on conceptual similarity to be incorrect and, on the issue of notoriety, instead found that Messi’s reputation “would go beyond the purely sporting framework and this notoriety would have enabled him to become a public figure known by most of the informed, reasonably attentive and knowledgeable persons who read the press, follow the news or listen to the radio…”. The General Court thus concluded that Messi’s reputation went well beyond the section of the public who had an interest in football.

The General Court also corrected a finding of the Board of Appeal in relation to evidence of reputation. The lower court penalised Messi for not providing evidence of his substantial reputation during the opposition proceedings, finding that his failure to do so meant that his reputation could thus not be considered by the Board. However, the General Court took a more common sense approach, finding that the Board of Appeal should nevertheless have taken into account factual circumstances such as Messi’s reputation as “the most famous player in the world in recent years”, and his purported status as the highest-paid footballer in the world.

Finally, on the issue of the likelihood of confusion, the General Court found that the lower court had erred in not applying the relevant case law which established that “conceptual differences can neutralise, in certain circumstances, the visual and phonetic similarities between signs” where at least one of the signs has, in the eyes of the relevant public, “a clear and determined meaning such that the relevant public is likely to understand it immediately”. This principle was, according to the General Court, applicable to Messi’s applied-for mark.

The CJEU agreed with the conclusions drawn by the General Court and upheld its judgment, affirming that the reputation of a trade mark applicant is a relevant factor when assessing likelihood of confusion (on the basis that any such reputation may influence the relevant public’s assessment of the mark in concern), and that this is a factor which should be considered both in relation to earlier marks but also applied-for marks.

This appears to be a fairly common sense decision which will no doubt please well-known public figures who seek, in good faith, to secure trade mark protection for their names or brands, such as fellow footballer and Manchester United player Paul Pogba who has now secured a total of 20 EU trade mark registrations for marks relating to his personal brand (including for POGBA and POGBA DAB).