On 08.08.2011 Lionel Andrés Messi Cuccittini filed a trademark application for trademark for goods in classes 9, 25 and 28 (further: Messi trademark). The Messi trademark was opposed by Jaime Masferrer Coma. Opposition was based on two priory (October 31, 2013 and November 27, 1996) word trademarks Massi registered for goods in classes 25; 9 and 28. EUIPO upheld the opposition and rejected Messi trademark. EUIPO noticed that there is a likelihood of confusion between Messi and Massi trademarks. Trademarks are extremely similar as their dominant element MASSI and MESSI are almost identical on visual and phonetical level. As to the conceptual level the Office underlined that dissimilarity based on Messi’s fame would apply only in relation to part of the relevant public i.e. those that are interested in football and sport. The other part who is not interested in sport and football, shall not associate word MESSI with football player and this consumers shall not perceive the conceptual dissimilarity.
Applicant filed an appeal. He argued that there was no likelihood of confusion between the marks at issue. Messi complains that EUIPO failed to take account of the differences on conceptual level caused by the globally known character of his name. He underlined that he is not only famous football player and his reputation and fame goes far beyond the sport world. Lionel Messi is a public person known and recognized by informed consumer, so name Messi is well known and recognized by consumers what exclude the risk of confusion. The applicant has provided any evidence, that the general public invariably and automatically associates the word 'messi' with the football player of the same name, nor that the surname Messi is unusual.
The General Court (further: GC) shared EUIPO’s opinion on visual similarity, but not on conceptual similarity. GC noticed that even though applicant has argued, for the first time before the GC and without producing evidence to support his assertions, that Lionel Messi is a public figure whose notoriety goes beyond the purely sporting field, the Office could have known these information when examining the case. GC underlined that the limitation of the factual basis of the examination made by the Board of Appeal (further: BoA) does not preclude BoA from taking into account, in addition to the facts explicitly put forward by the parties to the opposition proceedings, well-known facts, that is, facts that are likely to be known by anyone or that may be known by generally accessible sources. GC admitted that the renown of Messi name as the name of world class football player and the public person is a well-known fact that can be known to anyway from the public sources. Bearing above in mind, GC said that signs are similar on visual (average) and phonetical level (high) and for some part of the consumers there will be conceptual difference between massi and Messi signs due to renown name of the applicant. The difference on conceptual level between the examined trademarks neutralize the visual and phonetic similarities between the examined signs. Considering the above there is no risk of confusion between messi and massi signs.
EUIPO brought an appeal submitting that taking into account only the perception of a significant part of the relevant public and failing to establish the relevance of the remainder of the relevant public, for whom the conceptual difference between the marks fails to counteract their visual or phonetic similarity is not right approach in examining the conceptual similarity ad GC has erred in law. The case is pending, see ref. no. Case C-449/18 P.