No likelihood of confusion between footballer’s “Messi” figurative mark and earlier MASSI mark
The European Court of Justice has published a press release summarising its decision in EUIPO v Messi Cuccittini (Joined cases C‑449/18 P et C‑474/18 P) EU:C:2020:722 (17 September 2020) that there was no likelihood of confusion between a figurative mark which included the name “Messi”, and an earlier MASSI word mark.
The footballer Lionel Messi applied to register a figurative sign which included the name “Messi” for various goods, including sports clothing, footwear and equipment. The application was opposed based on likelihood of confusion with the earlier word mark MASSI, registered as an EU trade mark (EUTM) for various goods, including clothing, footwear and cycling helmets. The EUIPO upheld the opposition. However, the General Court annulled that decision, holding that there was no likelihood of confusion due to Mr Messi’s reputation, which counteracted the signs’ visual and phonetic similarities.
The ECJ upheld the General Court’s decision, holding that:
- The General Court had not erred in law by taking into account, in assessing the likelihood of confusion, the reputation of the person whose name was the subject of the EUTM application. This reputation was one of the relevant factors in assessing the likelihood of confusion, insofar as it could influence the relevant public’s perception of the mark.
- The reputation of the name Messi, as the family name of a famous football player and public figure, was a well-known fact that could be ascertained from generally accessible sources. Those sources were matters available to EUIPO and should have been taken into account by it in assessing the conceptual similarity between the marks.
- The court’s assessment to establish whether a sign had a clear and established meaning could relate as much to the sign constituting the earlier mark as to the sign corresponding to the mark applied for.
The ECJ’s decision is of particular interest regarding the question of the registrability of a famous person’s name as a trade mark for goods.