The long road to Messi.

Published by Toyin Dodo-Williams (Jurist and Trademark Attorney) · 29 October 2020
Tags: #messi, #trademarks, #intellectualproperty, #lionelmessi, #conceptualsimilarity, #paradigmarks

The long road to Messi.

What happens to the protection of the exclusive right conferred on the owner of a trademark if his registered trademark is equal to the name of a famous person? In such a case, are there any circumstances, in which the acquired reputation claimed by a personality can be relied on against the proprietor of the earlier trademark?

Such were the questions on which the Court of Justice of the European Union (ECJ) ruled after years of controversy in the joint case of Lionel Messi against EUIPO and J.M.-E.V. y HIJOS, S.r.l., The case is interesting especially as it shed light on the thorny issues of conceptual similarity in the assessment of likelihood of confusion.

The dispute began on 23 November 2011 when the Spanish company J.M.-E.V. y HIJOS, presented an opposition against the registration of an application submitted by Lionel Messi concerning the figurative sign below for goods in classes 9, 25, 28 of the Nice Classification.

The ground of the opposition was the likelihood of confusion[1] between the requested sign MESSI and the earlier two European Union denominative trademarks “MASSI” in the ownership of J.M.-E.V. y HIJOS, registered respectively for products and services in classes 9, 12, 28 and 18, 25, 35 of the Nice Classification.

On the merits, the Opposition Division, applying the standard criteria for assessing the likelihood of confusion between the conflicting signs, found that the goods were partly identical and partly similar. Also, that, the signs are visually and phonetically similar because they coincide in four of their five letters, “M*SSI”. Given that, the only differences between the sign and the earlier trademark lie in their second letters, “A” and “E”, respectively, and in the figurative elements of the contested sign.

Furthermore, the Division found that the marks are conceptually dissimilar giving that only a part of the relevant public in the European Union would associate ‘MESSI’ with the surname of the famous football player ‘Lionel Andres Messi’. Instead, for the part of the public that would associate the marks with different meanings, or for which one of the marks does not have a meaning, the marks will appear to be conceptually dissimilar. For the remaining part of the public, for which neither of the signs conveys a meaning, the signs will appear to have no concept in common. Consequently, the Opposition Division by its decision of 12 June 2013 upheld the opposition for all the contested goods.

As a result in all the subsequent proceedings the divergence between the parties mainly revolved around the conceptual assessment of the contested sign. Indeed, on 9 August 2013 Lionel Messi filed a notice of appeal claiming that the mark ‘MESSI’ will be conceptually associated to the football player by all the relevant consumers and that in view of the visual and aural differences between the marks there is no likelihood of confusion.

On the merit, the Board of appeal approved the standard criteria used in the assessment of the likelihood of confusion. In particular, the Board found that reasonably observant consumers would not attribute any clear conceptual content to the conflicting marks, except, perhaps, that they would be associated with Italian sounding words or names. In the sense that, ‘MESSI’ and ‘MASSI’ are meaningless words for most consumers and that 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.

In the Board’s opinion, there are no elements suggesting that the mark ‘MESSI’ will be conceptually associated with the football player by all the relevant consumers. Therefore, contrary to what the applicant’s contention, it must be assumed that this conceptual association will not be perceived by the whole of the relevant public. Instead, for the part of public that does not associate “MESSI” with the football player, the alleged conceptual dissimilarity will obviously not be perceived. Consequently, the First Board of Appeal by its Decision of 23 April 2014 declared that the appeal is unfounded because the contested decision is correct on all accounts and must be confirmed.

Unsatisfied by the Board’s decision, Lionel Messi lodged an application at the Court on 25 July 2014, alleging that the Board of Appeal was wrong to conclude that there was a likelihood of confusion between the signs at issue[2]. Further, he stated that given the verbal element of the sign “MESSI” consists of the patronymic surname of the most famous football player, Lionel Messi and that the fact that he is well known goes beyond the purely sporting context.

In his view it follows that the underlying assessment did not take into account the significant differences between the two signs, particularly on a conceptual level. In addition he stated that that according to the case-law, it is necessary to take account of the possible reputation of the person who requests that his surname or first name be registered as a trademark, since that reputation may have an influence on the perception of the mark by the relevant public.

Furthermore, he stated that the figurative element of the mark applied for must be taken into account. These graphic elements representing the capital letter ‘M’ in a stylised manner above the verbal element, allow a clear distinction between the two marks and would make the famous football player Lionel Messi’s mark spontaneously recognisable by all consumers in the reference area.

In his rebuttal the Spanish company J.M.-E.V. y HIJOS, claimed that the acquired reputation claimed by a personality cannot under any circumstances be relied upon against the proprietor of the earlier trademark because, if that is not the case, such an owner would be deprived of his right merely because his registered trademark is equal to the name of a famous person. Moreover, if the coexistence of the conflicting marks were permitted, the distinctive character of the earlier mark MASSI would be clearly diluted.

On the question of erroneous conceptual assessment raised by the applicant Lionel Messi, the General Court noted that, the applicant claimed for the first time in the present proceedings and without adducing evidence corroborating his assertions, that Lionel Messi is a public personality whose reputation goes beyond purely sporting field and that in recent years he is regarded by various sports organisations as the best player in the world.

In that regard the General Court observed that, even though it is settled case law that facts not submitted by the parties before the departments of EUIPO can no longer be relied on at the stage of proceedings before the Tribunal and that the latter cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. In that the lawfulness of a decision of a Board of Appeal of EUIPO is to be assessed in the light of the information available to the Board at the time of the adoption of the decision[3].

However, to that end, the restriction of the factual basis of the examination carried out by the Board of Appeal does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, facts which are likely to be known by anyone or which may be learnt from generally accessible sources[4]. In that regard, according to the General Court it must be noted that, the evidence adduced by the applicant in support of his assertions regarding the reputation of the name Messi is not information which the Board of Appeal could not have at the time when it adopted its decision[5].

The General Court in its global assessment of the likelihood of confusion found that, the Board of Appeal erred in finding that any conceptual difference would be perceived, if necessary, only by part of the relevant public. On the contrary, a significant part of the relevant public will associate the term “MESSI” with the name of the well-known footballer and will therefore perceive the word “MASSI” as being conceptually different.

In that regard, the General Court noted that according to the case-law, those conceptual differences may, in certain circumstances, counteract the visual and phonetic similarities between the signs at issue. For there to be such a counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately[6]. It follows that the conceptual differences between the signs at issue are such as to counteract the visual and phonetic similarities.

Consequently for the General Court, the degree of similarity between the marks at issue is not sufficiently great for it to be held that the relevant public might believe that the goods in question come from the same undertaking or, as the case may be, from economically linked undertakings. Therefore, the General Court annulled the decision made by the Board of Appeal.

Afterwards both EUIPO[7] and J.M.-E.V. y HIJOS[8] filed an appeal to the Court of Justice against the decision. EUIPO appealed on a single ground[9], criticising the General Court for having rejected the existence of likelihood of confusion, on the ground that a significant part of the relevant public will differentiate between the signs from a conceptual point of view. Whereas the General Court should have assessed whether the other part of that public was also significant and, if so, take into consideration the possible existence of likelihood of confusion with regard to this part.

The Court held that this plea is based on a misreading of the judgment under appeal. Given that, it was in the view of the perception of the conflicting marks as a whole by the relevant public that the General Court held that the Board of Appeal had erred in finding that there was likelihood of confusion.

J.M.-E.V. y HIJOS appealed on four grounds. However, our examination will be limited to questions of conceptual similarity, the first and third ground of appeal.

On the first ground J.M.-E.V. y HIJOS criticised the General Court for having taken into account, within the assessment of likelihood of confusion, the reputation of the person whose name is seeking registration as an EU trade mark.

The Court confirming its earlier judgment in Becker[10] held that this plea is unfounded. Given that, within the global assessment of likelihood of confusion, the reputation or recognition enjoyed by the earlier mark must be taken into account. However, account must also be taken of whether the person who requests that their first name and surname, taken together, be registered as a trade mark is well known, since that factor may obviously influence the perception of the mark by the relevant public.

On the third ground J.M.-E.V. y HIJOS criticised the General Court for having taken into account facts and evidence produced for the first time before it and therefore allowed a change in the subject-matter of the proceedings.

The Court held that this plea is unfounded. Given that the reputation of the name Messi, as the family name of the world-famous football player (and as a public figure), is a well-known fact. Therefore, the General Court was entitled to take into account arguments and evidence in this regard in its assessment of the conceptual similarity of the signs.

It follows that on 17 September 2020, the Court dismissed the joint appeal in their entirety, excluding any likelihood of confusion and allowing the figurative sign Messi to be registered as European Union Trademark.

Undoubtedly, the judgment confirms an exception to the rule and settles the question of the additional weight of a well-known name on the scale of assessment of the likelihood of confusion between two conflicting signs[11].

In that regard, it is reasonable to assume that so far the exception achieved its purpose, to cure a defect, a general belief, wrong in itself that, in principle, any surname which coincides with an earlier trademark may effectively prevent registration of a composite trademark including a first name and the surname in question on the basis of a likelihood of confusion[12]. It remains to be seen if the exception would be applicable in the case of a well-known corporate name.

[1] Pursuant to Article 8(1)(b) Regulation (EU) 2017/1001 (EUTMR).

[2] Pursuant to Article 8(1)(b) EUTMR.

[3] Case T‑235/12, CEDC International v OHIM - Underberg (Shape of a blade of grass in a bottle), EU:T:2014:1058, § 25

[4] Article 72 EUTMR

[5] Case T-185/02, Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), EU:T:2004:189, § 29~3

[6] Case C-361/04, Ruiz-Picasso and Others v OHIM, EU:C:2006:25, § 20

[7] Case C-449/18

[8] Case C-474/18

[9] Infringement of Article 8(1)(b) EUTMR.

[10] Case C 51/09, Barbara Becker v Harman International Industries Inc., EU:C:2010:368, § 37

[11] Pursuant to Article 8(1)(b) Regulation (EU) 2017/1001 (EUTMR)

[12] Case C‑51/09, Barbara Becker, Opinion of Advocate General Cruz Villalón, EU:C:2010:170, § 59