The trade markcan be registered in the EU and is not confusingly similar to the trade mark MASSI even for identical or highly similar goods. This recent decision of the Court of Justice (EU) ‘CJEU’ concludes a nine-year dispute between Messi and the Spanish cycling brand MASSI.
On 8 August 2011 the Argentinean footballer, Lionel Andrés Messi Cuccittini, aka Messi, applied to the EU Intellectual Property Office (EUIPO) to register as a trade mark the stylised word MESSI & Device as appears above. The goods included lifesaving apparatus and instruments (Class 9); clothing, footwear, headgear (Class 25); and gymnastic and sporting articles not included in other classes (Class 28).
The application was opposed by the Spanish owner of the specialist cycling brand MASSI on the basis of its earlier EU registrations for MASSI which cover helmets for cyclists; protective clothing against accidents; protection devices for personal use against accidents (Class 9); sporting clothing, footwear and headgear (Class 25) and gloves, accident protective shoulder, elbow and knee guards (Class 28). The MASSI brand dates back to the 1970s.
The opponent claimed that MASSI and MESSI are highly similar both visually and phonetically. This is hard to dispute. Further, the goods applied for under MESSI are identical with, or highly similar to, the registered goods under MASSI. If you consider that a cycling helmet is a piece of lifesaving apparatus and that cycling gloves are sporting articles, Messi’s broadly worded specification of goods in Classes 9 and 28 covers identical goods to those registered under MASSI. The class 25 goods are clearly identical. The opponent argued that, as a result of the similarity of marks and the similarity of goods, there exists a likelihood of confusion on the part of the consumer and MESSI should not be allowed onto the register.
The EUIPO agreed, as did the Board of Appeal. However, Messi appealed for a second time and succeeded before the General Court. The opponent then appealed but at the final possible appeal forum, the CJEU, the decision of the General Court was upheld and the MESSI mark will register. The decision is only available in French and Spanish but a link to the CJEU English press release is here. So how did Messi overcome the similarity of marks and of goods?
The short answer is by his existing reputation. There are three basic strands to comparing trade marks under dispute: visual, phonetic and conceptual. Despite the strong visual and phonetic similarity between MASSI and MESSI, Messi’s celebrity was considered to be of such exceptional strength that the consumer would immediately perceive the trade mark conceptually to be a brand connected to the individual. Thus his reputation neutralised the other similarities to the extent that there was not a likelihood of consumer confusion betweenand MASSI.
Further and extraordinarily, Messi did not even have to file any evidence of his reputation. Both the EUIPO and the Board of Appeal held that Messi should have filed evidence in order for them to assess the extent of his reputation across the EU.
However, the General Court took the view that his reputation was self-evident and did not require proof. It actually transcended the sporting arena and he was a public figure known by anyone who was reasonably attentive and read the press, followed the news or listened to the radio. The lower tribunals could have informed themselves of this because it is ‘a well-known fact’ and the lack of actual evidence before them was not determinative. The CJEU declined to overturn the General Court on this point, noting that its role was not to review the facts and make its own judgement but rather to assess whether the lower court had made an error at law. It had not.
It is an accepted principle in a trade mark dispute that the reputation of the opponent’s established mark is a relevant factor when considering whether there is a likelihood of confusion between the respective marks. The greater the reputation of the opponent’s mark, the broader the scope of protection it enjoys and this therefore increases a finding of likely confusion. This decision is a useful reminder that the reputation of the mark being brought forward for registration can also be a relevant factor. If the reputation which you claim has really obvious and global reach it may actually be possible to successfully rely on it without filing proof because tribunals are at liberty to inform themselves of such facts. They do not have to rely solely on evidence put before them in their deliberations.
However, this is a very exceptional case. There are probably only a handful of individuals or brands who could succeed in this way and ‘the Messi approach’ is not recommended as general practice. Ordinary mortals and brands need to file focused and persuasive evidence in support of a claim to reputation and thereby enhance the prospects of successfully prosecuting or defending an opposition.