Lionel triumphs in a “Messi” trade mark battle

Barcelona football star, Lionel Messi has emerged victorious in a trade mark dispute over his name that has raged on for nearly a decade. The decision of the Court of Justice of the European Union (“CJEU”) highlights the importance of reputation and well-known status in a mark as a factor when assessing the likelihood of deception or confusion arising with the mark of a third-party.

Lionel Messi lodged a trade mark application with the European Union Intellectual Property Office (“EUIPO”) for registration of the MESSI Logo (image) in relation to “sports and gymnastics clothing, footwear and equipment”. Displeased with the application, Spanish cycling company, J.M.-E.V. e hijos, opposed the registration of the logo asserting that it was too similar to its earlier MASSI trade mark, registered in respect of sportswear as well as protective clothing. The EUIPO sided with the J.M.-E.V. e hijos in the court of first instance and on appeal, finding that there was a likelihood of confusion arising between the two names owing to their visual and phonetic similarities.

 Aggrieved with the outcome, Messi brought an action before the General Court of the European Union (“GCEU”) for an annulment of the EUIPO’s decision. The GCEU held the view that the football player’s reputation counteracted the visual and phonetic similarities between the two names which excluded any likelihood of confusion arising.

 In a final throw of the dice, the EUIPO and J.M.-E.V. e hijos lodged appeals against the decision of the GCEU with the CJEU. In dismissing both appeals, the CJEU observed that the possible reputation of the person who is applying for his name to be registered as a trade mark is indeed one of the relevant factors for the purposes of assessing the likelihood of confusion, to the extent that reputation may influence the relevant public’s perception of the mark. The court found that the existence of such a reputation is a relevant factor for the purposes of establishing a conceptual difference between the terms ‘messi’ and ‘massi’.

 The registration of names as trade marks is nothing new as provision for the registration of names appeared in the earliest statutes regulating trade mark registrations. The Trade Marks Register in South Africa is full of registrations for the names of famous celebrities and sports stars. Registrations of this nature are invaluable, as they often form the backbone of strategies for the commercial exploitation by famous persons of their names, including through the sale of merchandise, or the engagement in endorsement and sponsorship deals.

 Perhaps the most intriguing aspect of the case is that it presents a reversal of the scenario encountered most often in trade, whereby the well-known mark is registered first with a confusingly similar mark subsequently appearing in the market. By way of illustration, the South African Supreme Court of Appeal in ​the ​case ​of​ Adidas AG v Pepkor Retail Limited was confronted with an alleged infringement of Adidas’ famous three-striped trade mark by the use of two and four striped marks on footwear by the respondent. The apex court held thatthe more distinctive the trade mark is, or the greater its reputation, the greater the likelihood that there will be deception or confusion where a similar mark is used on competing products”. This view accords with the established international position whereby marks that demonstrate a significant reputation (marks which are well-known) enjoy broader protection than marks with a less distinctive character.

 Having succeeded in the appeal before the CJEU on the strength of the well-known reputation in his name, the footballer now enjoys registered trade mark protection of his logo in all 27 member states of the European Union. Famous celebrities and sports stars are encouraged to pursue the registration of their names and to take advantage of the greater degree of trade mark protection afforded to them by their status.