Background

The 'MESSI' EUTM application was filed in 2011 but was opposed by Spanish cycling brand Massi who have an EUTM registration for "MASSI" in clothing, shoes and bicycle helmets, protective clothing and gloves since 1998. The Opposition Division of the European Union Intellectual Property Office (EUIPO) originally upheld the opposition against Messi’s application on the basis of: (a) the similarity of the marks; and (b) the similarity of the goods in respect of which registration was being sought. Messi lodged an appeal with the Board of Appeal of the EUIPO but the Opposition Division's decision was upheld. In particular, the Board of Appeal found that the conceptual differences arising out of Messi's fame would only be perceived by a certain portion of the relevant public (i.e. football fans) and that this did not sufficiently mitigate the risk of confusion to the public.

EU General Court Decision

The EU General Court agreed that the marks were visually and phonetically similar however the case turned on the conceptual differences between the 'MESSI' and 'MASSI' marks. Crucially, the Court found that the extent of Messi's fame and stature "counteracts the visual and phonetic similarities between his trade mark and the trade mark ‘MASSI’.” The Court held that the "average consumer reasonably well informed and reasonably observant and circumspect” could only but associate sports-related goods bearing the mark 'MESSI' with the five-time Ballon d’Or winner. Interestingly, the Court did not request documentary evidence to establish the football star's fame. Rather, the Court adopted a pragmatic approach and accepted that Messi was "a well-known public figure who can be seen on television and who is regularly discussed on television or on the radio".

Implications

'MESSI' has now been registered as an EUTM and the EU General Court's finding that an intrinsic uniqueness can exist in an individual's name will be well received by other athletes that may wish to use goodwill in their personal brand as a basis for trade mark protection.

It is possible, for example, that this decision will be closely watched by MMA star Conor McGregor who is facing intense opposition to a number of his EUTM applications on the basis of there being a likelihood of confusion with existing EUTMs.

It is clear from this decision, that the extent to which other athletes will be able to successfully register personal brands as trade marks will depend on how well known that individual is known to the average consumer. While global superstars such as Messi and Ronaldo can easily argue that their names are famous enough to dispel the likelihood of any confusion, this threshold is very high. The case remains that a trade mark with greater distinctive character will always be in a stronger position when it comes to registration.