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He scores again - the MESSI trade mark dispute ends in extra time

Fiona Waples
12/10/2020

Locations

United Kingdom

The CJEU recently found there was no likelihood of confusion between MASSI and MESSI (figurative mark) in a successful result for footballer Lionel Messi.

The CJEU decision marks a long running legal battle by Messi to register his logo for various clothing, sporting and electronic goods which first started in 2011. We have blogged on the history of the case and previous EUIPO Board of Appeal and General Court decisions, see Too famous to be confused – Barcelona superstar Lionel Messi secures come from behind victory over owner of MASSI trade mark.

We note the decision has not yet been released in English but the CJEU published a press release.

The General Court previously held that Messi's reputation counteracted the visual and aural similarities between the two signs and therefore excluded any likelihood of confusion. Essentially, the General Court believed Messi was "too famous" for confusion to exist. However, the owner of the earlier MASSI registration (J.M.-E.V. E HIJOS, S.R.L.) and the EUIPO filed appeals against the General Court decision but these have now been dismissed by the European Court of Justice ("CJEU") .
 
CJEU appeal
 
The owner of the earlier MASSI registration appealed on the basis that the General Court was wrong to take into account the reputation of a person (in this case, a world famous footballer) when considering likelihood of confusion.
 
The CJEU found that the reputation of the person applying for their name to be registered as a trade mark is a relevant facts when assessing likelihood of confusion, in the sense that it may influence the relevant public's perception of the mark in question. It held that the General Court did not err in considering Messi's reputation as a relevant factor, particularly when establishing a conceptual difference between MESSI and MASSI.
 
The CJEU further held that Messi's reputation had already been part of the proceedings before the EUIPO. Therefore the General Court had been correct to consider Messi's reputation (as a world famous footballer) as a well-known fact. It was not a new fact which the General Court took into account and could have been established from widely accessible sources, which were available to the EUIPO.
 
Finally, the CJEU confirmed that the General Court had correctly applied case law (Claude Ruiz-Picasso and others v OHIM, Case C-361/04 P) in relation to the assessment of whether a sign had a clear and established meaning. It held that "meaning" could relate to the earlier mark as much as to the later applied for mark.
 
We should add that the EUIPO also appealed to the CJEU on the basis the General Court incorrectly relied on a perception of a significant part of the relevant public to determine there was no likelihood of confusion. The EUIPO believed the General Court was wrong in its assessment and should have considered the whole of the relevant public. However, the CJEU disagreed. It found the General Court had taken into account the perception of the MASSI and MESSI marks by the whole of the relevant public before coming to the conclusion that there was no likelihood of confusion.

Comment
 
This case confirms that reputation of the trade mark applicant can be a relevant factor when considering likelihood of confusion, albeit simply one of the many global factors taken into consideration. Reputation is likely to only come into play in a handful of instances where famous people or companies are concerned.

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