The footballer (soccer player) Lionel Messi finally obtained the registration of his trademark MESSI but had to contest the opposition based on the earlier mark MASSI for 6 years and all the way to the General Court.
The Board of Appeal of the EUIPO had in fact held that applied to clothing and sports articles not specific to the practice of football (soccer), the applicant had failed to demonstrate that the general public invariably and automatically associates the term MESSI with the name of Lionel Messi, with no indication of the first name, or that the surname MESSI would present an unusual character. Indeed, if according to the case-law, conceptual differences can neutralize, in certain circumstances, the visual and phonetic similarities between the signs at stake, such a neutralization requires that at least one of the signs has, for the relevant public, a clear and determined meaning, so that this public is likely to catch it immediately.
Given the visual and phonetic similarities between both marks and in the lack of intellectual differences for part of the public, the EUIPO therefore considered that there was a likelihood of confusion between the marks MASSI and MESSI and upheld the opposition.
The General Court (26 Apr. 2018, Case T-554/14) considered that:
- The Board of Appeal could not ignore as a well-known fact that Lionel Messi is a public figure known to most knowledgeable, reasonably attentive and informed people reading the press, watching the TV news, going to the movies or listening the radio, where he regularly creates the buzz;
- Rather than assuming that this difference would not be established by the entire relevant public, the Board of Appeal should have examined whether a significant part of the relevant public was not likely to make a conceptual association between the term MESSI and the name of the famous football (soccer) player;
- If the Board of Appeal had taken into consideration the applicant’s reputation, it should have concluded that the word MESSI has a clearly different conceptual meaning from the word MASSI, which refers to a consonant-sounding Italian name, without conveying any special meaning, except in Italian, where it could be translated as “big stones”;
- These clear conceptual differences between the signs are significant enough to neutralize the visual and phonetic similarities between MESSI and MASSI.
Of course, this trademark will be extremely valuable.
But that might be a Pyrrhic victory, since the MESSI mark will itself be protected only against an identical reproduction of the sign MESSI, for the very reasons that it was allowed to registration. As well as the PICASSO trademark, which could not block the PICARO mark for vehicles, trademarks corresponding to the names of very well-known personalities paradoxically have an extremely limited scope of protection.
The ransom of glory…