Messi scores TM victory as CJEU kicks out EUIPO appeal
In a win for Lionel Messi, the Court of Justice of the European Union (CJEU) has today dismissed an appeal brought by the European Union Intellectual Property Office (EUIPO) and a clothing company against the footballer’s bid to register ‘MESSI’.
In August 2011, the footballer filed an application with the EUIPO to register a mark for sports and gymnastics clothing, footwear and equipment.
In November 2011, Jaime Masferrer Coma filed a notice of opposition, alleging a likelihood of confusion with the trademark ‘MASSI’, the rights to which were transferred to the Spanish company J.M.-E.V. e hijos in 2012. This earlier mark covered clothing, footwear, cycling helmets, protective clothing and gloves.
In 2013, the EUIPO upheld the opposition, which Messi appealed. In April 2014, the EUIPO dismissed the appeal, holding that there was a likelihood that consumers would be confused between the signs ‘MASSI’ and ‘MESSI’.
Messi then brought an action before the General Court requesting an annulment of EUIPO’s decision. In April 2018, the General Court ruled that the football player’s reputation counteracted the visual and phonetic similarities between the two signs and excluded any likelihood of confusion.
EUIPO and the Spanish company appealed, arguing that the General Court should not have solely relied on the perception of a significant part of the relevant public to rule out a likelihood of confusion. J.M.-E.V. e hijos also claimed that the General Court had erred in law in having considered that, when assessing the likelihood of confusion, it needed to take Messi’s reputation into account.
The CJEU found, however, that the EUIPO had been wrong to conclude that the use of the ‘MESSI’ mark for the goods at issue could give rise to a likelihood of confusion with the ‘MASSI’ marks.
The CJEU further observed that, “just like the reputation of the earlier mark, the possible reputation of the person who is applying for his name to be registered as a trademark is one of the relevant factors for the purposes of assessing the likelihood of confusion,” because that reputation may influence the public’s perception of the mark.
It concluded that the General Court did not make an error in considering that Messi’s reputation was a relevant factor in establishing a conceptual difference between the marks.
The CJEU also found that, contrary to the Spanish company’s argument, the question of the reputation enjoyed by Messi had already been an issue in the proceedings before EUIPO.
It added that the arguments relied upon at the stage of the action before the General Court, consisted of well-known facts, so it was correct to find that, “the reputation of the name Messi, as the family name of a football player who is famous throughout the world and as a public figure”, was well known.
The CJEU also found against the arguments of J.M.-E.V. e hijos that held that the General Court had erred in failing to apply case law from the judgment in RuizPicasso and Others v OHIM 4 (2006).
EUIPO and J.M.-E.V. e hijos were ordered to pay Messi’s costs.
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