Lionel Messi scores at EU court
Lionel Messi, considered one of the world’s greatest-ever footballers, has obtained victory at the EU General Court after it overturned a European Union Intellectual Property Office (EUIPO) finding that Messi couldn’t register his trademark.
Today, April 26, the court held that Messi’s fame counteracts the similarities between his trademark and the trademark ‘Massi’, which belongs to a Spanish company.
Back in 2011, Messi attempted to register a trademark containing the word ‘Messi’ and a logo, covering sports and gymnastics clothing, footwear and equipment.
Soon after, Jaime Coma opposed the mark, claiming a likelihood of confusion with the ‘Massi’ trademark, which is registered for clothing, shoes, bicycle helmets, protective clothing and gloves. The rights to the marks were transferred in May 2012 to Spanish company JM-EV e hijos.
The EUIPO upheld Coma’s opposition, which Messi appealed against.
In April 2014, the EUIPO dismissed the appeal after concluding that there is a likelihood of confusion between the marks.
According to the EUIPO, the marks are similar because their dominant elements (‘Massi’ and ‘Messi’) are almost identical visually and phonetically and because a possible conceptual differentiation will be made only by part of the relevant public.
The General Court annulled this decision today, finding that Messi is a well-known public figure who appears and is regularly discussed on TV and radio.
In a press release published today, the court said: “The court finds that it is wrong to consider that the reputation enjoyed by Messi concerns only the part of the public which is interested in football and sport in general.”
Although the court found that the marks have an average degree of visual and phonetic similarity, it added that the EUIPO should have examined whether a significant part of the public was not likely to make a conceptual association between the term ‘Messi’ and the name of the football player.
The General Court also noted that the goods covered by Messi’s mark are sports equipment and it “seems unlikely” that an average consumer of these goods will not directly associate the mark with Messi.
It added: “The degree of similarity between the marks is not sufficiently high to accept that the relevant public may believe that the goods at issue come from the same undertaking or, as the case may be, from economically-linked undertakings.”
Messi may now register his trademark.
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