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Lionel Messi can validly register his last name as a trade mark, according to the ECJ

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14/10/2020

On August 8, 2011, Lionel Messi, the famous football player, filed an application with the EUIPO to register the following figurative trademark, containing his last name, for sports and gymnastics clothing, footwear and equipment:

 

 

 

 

 

 

 

After opposition proceedings and an appeal procedure, the EUIPO decided that a likelihood of confusion existed with the older EU work mark MASSI, that was registered for clothing, footwear, cycling helmets, protective clothing and gloves.

 On 17 September 2020, the Court of Justice of the European Union (ECJ) dismissed two appeals against the judgment of the General Court of 26 April 2018. The General Court annulled the decision of the EUIPO by deciding that Lionel Messi’s reputation counteracted the visual and phonetic similarities between the two signs and thus excluded any likelihood of confusion.  Hence Lionel Messi won this case and it has now been confirmed that well-known public figures who seek, in good faith, to secure trade mark protection for their names are allowed to do so.

 

Most importantly, the ECJ considered the following:

 

  • The General Court took into account the entire relevant public’s perception of the two marks in deciding that the Board of Appeal had wrongly concluded that there was a likelihood of confusion between the conflicting marks, since a possible conceptual differentiation would only be made by part of the relevant public;
 
  • The reputation of the person applying for his name to be registered as a trade mark is a relevant factor, amongst others, for the assessment of the likelihood of confusion. The General Court therefore concluded correctly that the reputation of Lionel Messi was relevant for the conclusion that a conceptual difference exists between “Messi” and “Massi”;
 
  • The reputation of Lionel Messi was already well-known at the time of the decision of the EUIPO, who should have taken it into account;
 
  • The General Court was not wrong to apply the case law from the RuizPicasso and Others v. OHIM case in stating that the relevant public perceived the signs in question as being conceptually different. According to the ECJ, it is not relevant public as such that is decisive in this regard, but the perception of the relevant public of the sign in question
 


For more information on this topic or on trade mark law in general, you can always contact Sarah van den Brande (s.vandenbrande@liedekerke.com) or Emmelien Rientjes (e.rientjes@liedekerke.com).