Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

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 ros bottom lb

More from across our site

We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Sukanya Sarkar shares her thoughts on this year’s annual meeting in Singapore, where debates ranged from AI opportunities to improving law firm culture
The court’s ruling is a good reminder that US parties aren’t guaranteed attorney fees just because they win, say sources
With business confidence in a shaky state, Rachel Tong and Lisa Yong of Rouse discuss how in-house IP teams can manage their trademark portfolios through uncertain times
The Court of Appeal had stern words for Med-El’s representatives after they highlighted a deputy judge’s background as a solicitor
Funders and NPEs say asserting patent portfolios can minimise risk at the USPTO’s PTAB, where procedure remains a controversial topic
The US Supreme Court’s ruling wasn’t a surprise and reflects a trend that had already been bubbling away for a while, say tech and pharma counsel
Previous attempts at major transatlantic tie-ups have failed, so lawyers will keep their eyes firmly on Allen & Overy’s grand plans
INTA CEO Etienne Sanz de Acedo shares his plans if he were to win the EUIPO leadership race and says his application does not affect his INTA role
The French finance minister told António Campinos the timing of an EPO event in Lisbon could be seen as interference in the EUIPO leadership race