Apr 27, 2018

Messi scores at the General Court

Barcelona and Argentina football superstar Lionel Messi has won a seven-year trade mark battle over the use of his own name. Messi first made an application in 2011 to the European Union Intellectual Property Office (EUIPO) for a device and word to be used on sports clothing, shoes and equipment. The disputed mark consists of an 'M' symbol, with the word Messi underneath.

That filing was opposed by the Spanish cycling brand, Massi. It argued that the names were too similar and would cause confusion to consumers. At first instance the EUIPO agreed, and ruled against Messi on the basis that the names were phonetically and visually "almost identical", and were likely to cause confusion in the minds of the relevant public. The EUIPO said that only some people would be able to recognise that the two marks were different.

James Masferrer Coma, the owner of the Spanish cycling brand, had argued that as he already owned EU trade marks for the brand, allowing Messi's registration would dilute his rights and cause significant confusion to his customers.

Messi appealed to the General Court in Luxembourg. It was there that the decision was overturned with the court ruling that the footballer's fame counteracts the visual and phonetic similarities between the marks. The court explained that due to Messi's fame it was highly unlikely that anyone would confuse the two brands. In coming to its decision, the EU court considered that the relevant public would perceive the term Massi as conceptually different, and therefore confusion would not arise.

Massi still have the option to appeal the decision to the Court of Justice. Given the protracted nature of this dispute it will be interesting to see if such an appeal will be lodged, or if Massi will cut its losses and accept the decision.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.

in: EU/International, Trade Marks

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