Footballer Lionel Messi has succeeded in a nine-year legal battle to register his surname as a trade mark in the EU.
The Barcelona FC player, who was ranked the world's highest-paid athlete by Forbes in 2019, had applied to register his surname "MESSI" with a stylised logo in August 2011. The application covered sports and gymnastics clothing, footwear and equipment, among other goods.
The application was opposed by the owners of Spanish cycling company Massi, on the basis of their earlier EU trade mark for the word MASSI also covering clothing, shoes and sportswear equipment.
The EU Intellectual Property Office ("EUIPO") originally decided in favour of the Spanish company and went on to dismiss a later appeal in 2014 by Messi, finding that the trade marks in question were confusingly similar.
Mr. Messi appealed to the General Court of the EU, who overturned the EUIPO's decision in 2018 – the General Court held that, as Mr. Messi is an internationally well-known public figure, the general public would be unlikely to confuse the two marks. Instead, the public will associate the word "MESSI" with the famous footballer, and will therefore perceive "MASSI" as being different conceptually.
The cycling company Massi then appealed the General Court's decision to the European Court of Justice – the EU's supreme court in matters of EU law. The European Court of Justice agreed with the decision of the General Court and dismissed Massi's appeal, confirming that Lionel Messi's logo mark can be registered in the EU for the goods in question.
Messi already has a range of existing EU trade mark registrations for a variety of goods and services, including the marks LIONEL MESSI, LEO MESSI, and his signature.
This is an interesting decision, with the General Court and European Court of Justice finding that the player's international fame and reputation outweigh the visual and phonetic similarities between the trade marks, although the decision does appears to be exceptional as a result of the incomparable worldwide reputation that Lionel Messi enjoys. As such, this should not deter trade mark owners from enforcing their rights where necessary – a trade mark registration can still be a very valuable asset for protecting and enforcing a brand and its reputation against third parties.
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