The recent CJEU judgment on 17 September 2020 marks the end of the MASSI v MESSI (figurative mark) longstanding dispute, with a favourable outcome for the notorious football player Lionel Messi.
Back in 2011, Lionel Messi had applied to register the below trade mark in respect of wide range of goods in Classes 9, 25 and 28 at the EUIPO.
The application was opposed by the proprietor of two earlier registrations for the word MASSI, also in respect of goods in Classes 9, 25 and 28. Both the Opposition Division (in 2013) and the Board of Appeal at the EUIPO (in 2014) found that MASSI and MESSI were confusingly similar under Article 8(1)(b) of Regulation 207/2009.
In 2018, the General Court (GC) annulled the EUIPO Board of Appeal’s decision accepting that the average consumer of the goods in question (sports equipment/clothing) would associate the term “MESSI” with the famous football player. This resulted in a conceptual dissimilarity that was enough to offset the visual and phonetic similarities between the marks. Essentially, Lionel Messi was “too famous” for a likelihood of confusion to exist. The decision was appealed by both the owner of the earlier registrations for MASSI and the EUIPO.
The appeals were made, among others, on the basis that:
- the GC should not have taken into account the reputation of the applicant when assessing the likelihood of confusion as this would otherwise mean that “all famous people” would have the right to automatically register their name as a trade mark, whether or not identical earlier marks exist;
- the GC should not have accepted that the knowledge of Lionel Messi’s surname “throughout Europe” was a well-known fact;
- Lionel Messi had wrongly been allowed to introduce new evidence on the extent of his fame at the GC stage; and
- the GC had failed to consider the whole of the relevant public, including the minority that might not.
However, the CJEU dismissed these arguments. In particular, it confirmed that the assessment of likelihood of confusion required a global assessment, which takes into account all relevant factors including, in this case, the fame of the applicant.
The CJEU also found that the GC had correctly taken into account the whole of the relevant public and that it was not for the CJEU to interfere with the GC’s findings of fact.
Importantly, the CJEU did not address one further issue that was raised – whether accepting Lionel Messi’s fame as a “well-known fact” should automatically lead to the conclusion that consumers would associate that name with a specific mark as an commercial indicator of origin of the goods that was distinct from MASSI.
This case clarifies that the reputation of an applicant of a mark, as opposed to the mark itself, can be an important factor when assessing likelihood of confusion. While the CJEU’s findings are unlikely to open the floodgates to famous people “automatically” registering their names as trade marks, being able to prove extreme fame as a “well-known fact throughout Europe” will shift the balance in the applicant’s favour.
"the possible reputation of the person who is applying for his name to be registered as a trade mark is one of the relevant factors for the purposes of assessing the likelihood of confusion"