Lionel Messi scores trade mark goal by winning his long running trade mark dispute cases.
It is not often that issues involving trade marks make the news. When they do, it is often because they involves well known personalities. On the day of World IP Day (26th April 2018) the General Court of the European Union published a press release stating that, none other than Lionel Messi, scored a trade mark goal by winning his long running case.
In this case, Mr Messi, filed an EU figurative application containing the word MESSI in a stylised form in August 2011 to cover, amongst other things, sports and gymnastics clothing, footwear and equipment.
The application was opposed by Mr Jaime Masferrer Coma claiming a likelihood of confusion between the application and his earlier mark, MASSI, which covered amongst other things, clothing, shoes, bicycle helmets, protective clothing and gloves.
The European Union Intellectual Property Office (EUIPO) found in favour of Mr Coma and rejected Mr Messi’s application. Mr Messi appealed the decision to the EUIPO’s Board of Appeal (EUIPO BOA)but again found no favour when the appeal failed and the EUIPO BOA took the view that the marks at issue were similar because their dominant elements, consisting of the terms ‘MASSI’ and ‘MESSI’, were almost identical visually and phonetically and that a possible conceptual differentiation would only be made by part of the relevant public.
This was not acceptable to Mr Messi and he appealed the appeal to the General Court to annul the EUIPO BOA’s decision.
Although the full text of the case has not been made available in English yet, the General Court states that:
- The signs have an average degree of similarity.
- Mr Messi is well known to the public interested in sport.
- The General Court believed the general public would associate the term “MESSI” with the name of the famous football player.
The General Court concluded that the relevant public would associate the mark MESSI with the famous football player and therefore perceive the mark MASSI as being conceptually different even when applied to goods not related to the field of football. The General Court found that the EUIPO was incorrect in concluding that there was a likelihood of confusion and found in favour of Mr Lionel Messi.
Trade marks are crucial to any business, whether it be a famous footballer or a sole trader. It communicates with your clients and puts in place the proper protection vital to building your business. This high profile case demonstrates that getting your trade mark protection right is critical whatever your business.
Sanjay Raphael is a Trade mark attorney in our Intellectual Property team, if you would like more information on a trade mark dispute or any other intellectual property matters please do get in touch by telephone 01392 210700 or email TradeMarks@stephens-scown.co.ukIf you would like to know how to protect your mark or strategies you can employ, please get in touch with Stephens Scown’s IP & IT team.