Europe: Messi scores trade mark goal at EU General Court

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Europe: Messi scores trade mark goal at EU General Court

After a seven year fight, the EU General Court has ruled that world famous football star Lionel Messi may register a logo including his surname MESSI as a trade mark for sports equipment and clothing. The mark had been challenged by a Spanish cycling gear manufacturer who owns the mark MASSI.

MESSI v MASSI

In 2011, Messi sought to register a logo (depicted below), including an emblem featuring the letter "M" and the surname Messi underneath as an EU trade mark.

messi.jpg

The mark was applied for, among others, clothing, footwear, gymnastics and sports articles. In November 2011 Jaime Masferrer Coma filed an opposition against the registration of the mark based on an earlier EU trade mark, MASSI, registered for, inter alia, clothing, shoes, bicycle helmets, protective clothing and cycle gloves. Mr Coma claimed that the signs were too similar and would cause confusion in the market.

The European Union Intellectual Property Office (EUIPO) ruled in favour of Jaime Coma in 2011, finding that there was a likelihood of confusion between the marks, due to the similarity of the dominant parts of the marks. It was of the opinion that the terms MASSI and MESSI are almost identical from a visual and phonetic point of view and that only a small part of the relevant public would make a possible conceptual distinction between the marks. The decision was upheld by the EUIPO and later confirmed by the Board of Appeal.

Well-known public figure

Messi appealed against the decision before the General Court of the European Union. The General Court disagreed with the EUIPO and annulled the earlier decision. According to the General Court a large part of the relevant public is familiar with Messi being a celebrity with a lot of media exposure. As a consequence, the majority of the public is likely to link the term MESSI to the name of the well-known football player, even more so given the goods in question.

No likelihood of confusion

Conceptual differences may under certain circumstances counteract visual or phonetic similarity between signs. This rule is only applicable when at least one of the marks at issue has a clear and determined meaning enabling the relevant public to seize it immediately. The other mark must have no such meaning or an entirely different meaning.

The General Court found that the fame enjoyed by Messi gives MESSI a clear and determined meaning. Furthermore, MESSI is clearly distinguishable from the word MASSI, which does not have any specific meaning, except in Italian where it could mean "large stones". In conclusion, the conceptual differences neutralise the visual and phonetic similarities between the marks in question and any likelihood of confusion is therefore excluded.

pardoen.jpg

Myrthe Pardoen


V.O.Carnegieplein 5, 2517 KJThe HagueThe NetherlandsTel: +31 70 416 67 11Fax: +31 70 416 67 99info@vo.euwww.vo.eu

more from across site and SHARED ros bottom lb

More from across our site

The UK-India trade deal doesn’t mention legal services, showing India has again failed to agree on a move that could help foreign firms and local practitioners
Eva-Maria Strobel reveals some of the firm’s IP achievements and its approach to client relationships
Lateral hires at Thompson Hine and Pierson Ferdinand said they were inspired by fresh business opportunities and innovative strategies at their new firms
The launch of a new IP insurance product and INTA hiring a former USPTO commissioner were also among the top talking points this week
The firm explains how it secured a $170.6 million verdict against the government in a patent dispute surrounding airport technology, and why the case led to interest from other inventors
Developments of note included the court partially allowing a claim concerning confidentiality clubs and a decision involving technology used in football matches
The firm said adding capability in the French capital completes its coverage of all major patent litigation jurisdictions as it strives for UPC excellence
Marc Fenster explains how keeping the jury focused on the most relevant facts helped secure a $279m win for his client against Samsung
Clients are divided on what externally funded IP firms bring to the table, so those firms must prove why the benefits outweigh the downsides
Rahul Bhartiya, AI coordinator at the EUIPO, discusses the office’s strategy, collaboration with other IP offices, and getting rid of routine tasks
Gift this article