“Messi” Case: when the Applicant’s Reputation Reverses the Score
Far from the football pitch where he is used to winning, it was before the European Court of Justice that the six-time Golden Ball winner, Lionel Messi, recently scored another victory.
On 17 September 20201, the Court put an end to the dispute between J.M.‑E.V. e hijos SRL, owner of European Union trademarks "MASSI", and the famous Argentinian footballer Messi (his full name being Lionel Andrés Messi Cuccittini), applicant for an eponymous European Union trademark, a dispute which we reported in our article of 31 January 2019.
The Court of Justice blew the final whistle by dismissing the appeals brought by the EUIPO and J.M.‑E.V. e hijos SRL seeking cancellation of the judgment of the European General Court of 26 April 2018 which concluded that there was no likelihood of confusion between the marks MASSI and because of the conceptual differences between the signs which were sufficient to neutralise the visual and aural similarities of the marks2.
The General Court’s reasoning was that, in assessing the likelihood of confusion, account had to be taken of the reputation of the person whose name was applied for registration as a trademark. In the present case, such reputation enabled the Court to come to the conclusion that the term “MESSI”, which is associated by a significant part of the relevant public with the name of the famous football player, was conceptually different from the term “MASSI”.
In its appeal, J.M.‑E.V. e hijos SRL criticised the General Court’s interpretation, arguing that it would give all famous persons the right to register their name as a trademark regardless of the existence of strongly similar earlier marks.
Hence, this would ultimately lead to a weakening of the protection conferred by a trademark registration on similar signs.
In its [J.M.‑E.V. e hijos SRL] view, taking into account the reputation of the contested mark’s owner would be irrelevant and only the earlier mark’s reputation should be taken into account in assessing the likelihood of confusion.
However, in its judgment of 17 September 2020, the Court recalls that, according to settled caselaw, the existence of a likelihood of confusion must be assessed globally, taking into account all the relevant factors of the case.
It is true that the reputation of the earlier mark is a relevant factor in assessing the likelihood of confusion. However, the Court points out that account must also be taken of the possible reputation of the person asking for their name to be registered as a trademark when that reputation may have an influence on the perception of the mark by the relevant public.
The Court thus corroborates the General Court’s position which considered that the reputation of Mr. Messi Cuccittini was indeed a relevant factor in order to establish a conceptual difference between the terms “MESSI” and “MASSI”.
The Court of Justice therefore confirms that the reputation of the person filing a trademark constitutes a criterion for assessing the likelihood of confusion and may therefore lead to the exclusion of such likelihood of confusion.
This decision, which is highly questionable in that it weakens the scope of protection conferred by the registration of a mark on similar signs against names of famous people registered as trademarks, is nevertheless in line with several decisions handed down both in the same sector (see the “Pelé” case3 for example) and others (see the “Picasso”4, “Asterix”5 or “Barbara Becker”6 cases).
Moreover, there is no doubt that the outcome would have been the same if the sign “MESSI” has constituted the earlier mark and served as the basis for the opposition.
These decisions make it clear that reputation is a double-edged sword. While it may, on one hand, and as in the present case, constitute an advantage and make it possible to obtain the registration of a mark regardless of the existence of strongly similar earlier marks, it may, on the other hand, weaken the protection granted to a famous surname which is conceptually easily distinguishable from a name which is visually and phonetically similar.
Moreover, we are surprised of the paradox operated by the General Court, and then by the Court of Justice, between trademarks with reputation and personality rights. In the present case, it is the reputation of the person filing the trademark that was taken into consideration in assessing the likelihood of confusion and not the reputation of the trademark itself, which supposes, as we know, a recognition in the concerned territory by the relevant public as a trademark namely as a distinctive sign for given goods and services. However, at the time the opposition was filed (in 2013), it was not the trademark MESSI that had a reputation but the surname of the famous Argentinean football player.
We can also criticise the General Court’s judgment for excluding a likelihood of confusion regarding all the goods in conflict because, while it is clear that reference to the football player is not questionable when the trademark is associated with sport articles or even clothing, this link is however questionable in respect of other goods such as “life-saving apparatus and instruments” (Class 9) which were also covered by the contested application.
The surrounding circumstances of this decision may however be unique.
First, it is questionable whether the Court would have come to the same decision if the owner of the “MESSI” mark had not been the footballer himself but rather a company or a family member as is often the case.
Second, it is increasingly rare for a person’s reputation to precede the registration of a famous name as a trademark for so long, for example, the mark was first registered in 20177, the year the eponymous player gained worldwide notoriety.
This case is nevertheless a stark reminder that the identity of the owner of trademark rights in a famous surname is a factor that should not be overlooked when developing a trademark defense strategy.
Plasseraud IP Trademarks & Designs experts can advise you in your filing, management, defence and value of your trademarks enhancing strategies for your trademarks and designs, as well as copyright.