The Court of Justice upheld the judgment of the General Court authorising football player Lionel Messi to register the trade mark ‘MESSI’ for sports equipment and clothing
In August
2011, the footballer Lionel Andrés Messi Cuccittini filed an application with
the European Union Intellectual Property Office (EUIPO) for registration of a
figurative sign as an EU trade mark, inter alia for sports and gymnastics clothing,
footwear and equipment.
In November 2011, Mr Jaime Masferrer Coma
filed a notice of opposition to the registration of the mark applied for by Mr
Messi Cuccittini, alleging a likelihood of confusion with the EU word marks
MASSI, registered, inter alia, for clothing, footwear, cycling helmets,
protective clothing and gloves (the rights to those marks were transferred in
May 2012 to the Spanish company J.M.-E.V. e hijos). [1]
In 2013,
EUIPO upheld the opposition. Mr Messi Cuccittini lodged an appeal with EUIPO
against that decision. In April 2014, EUIPO dismissed the appeal, due,
essentially, to a likelihood of confusion between the signs MASSI and MESSI. Mr
Messi Cuccittini then brought an action before the General Court of the
European Union for annulment of EUIPO’s decision. [2]
By its
judgment of 26 April 2018, [3]
the General Court annulled that decision, considering that the football
player’s reputation counteracted the visual and phonetic similarities between
the two signs and excluded any likelihood of confusion. EUIPO and the company
J.M.-E.V. e hijos lodged appeals against the judgment of the General Court. In
today’s judgment, the Court of Justice dismisses both appeals.
EUIPO (Case
C-449/18 P) objected to the General Court having relied only on the perception
of a significant part of the relevant public in order to rule out a likelihood
of confusion. The Court of Justice considers, however, that the General Court
did indeed take into account the perception of the marks MASSI and MESSI by the
whole of the relevant public before ruling that EUIPO had been wrong to
conclude that use of the MESSI mark for the goods at issue could give rise to a
likelihood of confusion with the MASSI marks on the part of the relevant
public. J.M.-E.V. e hijos (C-474/18 P) claimed that the General Court had erred
in law in having considered that, when assessing the likelihood of confusion,
account should be taken of the reputation of the person, in this case Mr Messi
Cuccittini, whose name is the subject of an application for an EU trade mark.
The Court
of Justice observes that, just like the reputation of the earlier mark, 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, in so far as that reputation may influence the
relevant public’s perception of the mark.
The General
Court did not therefore err in considering that Mr Messi Cuccittini’s
reputation constituted a relevant factor for the purposes of establishing a
conceptual difference between the terms ‘messi’ and ‘massi’. The Court also
observes that, contrary to the Spanish company’s assertion, the question of the
reputation enjoyed by Mr Messi Cuccittini had already been in issue in the
proceedings before EUIPO.
It adds
that the arguments relied on at the stage of the action before the General
Court, which consist only of stating well-known facts, are not considered to be
new, so the General Court was correct to find that, given that the reputation
of the name Messi, as the family name of a football player who is famous
throughout the world and as a public figure, constituted a well-known fact,
that is to say a fact that is likely to be known by any person or that may be
ascertained from generally accessible sources, those sources were matters that
were available to EUIPO at the time it adopted its decision and which it should
have taken into account in its assessment of the conceptual similarity of the
signs MASSI and MESSI.
Lastly, the
Court considers that the arguments of J.M.-E.V. e hijos to the effect that the
General Court erred in applying the case-law flowing from the judgment in RuizPicasso
and Others v OHIM [4]
are based on a misreading of that judgment. Indeed, the existence of an
earlier, well-known mark cited in support of an opposition does not constitute
a condition for application of that case-law.
The Court
notes that the assessment aiming to establish whether a sign has a clear and
established meaning as far as the public is concerned may, therefore, relate as
much to the sign constituting the earlier mark (in this case MASSI) as it does
to the sign corresponding to the mark applied for (in this case MESSI). It
follows that, having noted that the relevant public perceived the signs MASSI
and MESSI as being conceptually different, the General Court could rightly
apply that case-law. (curia.europa.eu/photo: pixabay)
[1] The same company was
successful in another trade mark case before the General Court. EUIPO’s
decision upholding the application lodged by the Italian cycle manufacturer
Masi for a declaration of invalidity in respect of the trade mark MASSI was
annulled. See judgment of the General Court of 3 May 2018, J-M.-E.V. e hijos v
EUIPO – Masi (MASSI) (T-2/17)
[2] The Brazilian football player
Neymar has also been successful in another trade mark case before the General
Court. See judgment of the General Court of 14 May 2019, Moreira v EUIPO – Da
Silva Santos Júnior (NEYMAR) (T-795/17); see also PR No 63/19.
[3] Judgment of the General Court
of 26 April 2018, Messi Cuccittini v EUIPO – J.M.-E.V. e hijos (MESSI)
(T-554/14); see also PR No 56/18.
[4] Judgment of the Court of 12
January 2006, RuizPicasso and Others v OHIM (C-361/04 P)
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