They think it’s all over… it is now!
We wrote previously about Lionel Messi's success against Massi, the famous Spanish cycling brand, back in 2018, when the General Court of the European Union ruled that the world-famous footballer could finally register his name as a trade mark. The decision came after a lengthy dispute in which Massi opposed the trade mark application on the grounds that ‘Messi’ and ‘Massi’ were very similar and likely to give rise to consumer confusion when used in relation to the same or similar goods. Since then, Massi filed an appeal to the European Court of Justice (ECJ) to have the decision overturned.
The ECJ dismissed the appeal. In doing so, it ruled that the General Court was right to take into account the reputation of the now six-time winner of the Ballon d’Or, “who is famous throughout the world and as a public figure”, when considering whether consumers would be confused by the two marks. It held that the name ‘Messi’ was likely to mean something to anyone able to access generally-available media sources such as TV and radio, irrespective of any desire to follow football. On that basis, there was no scope for consumer confusion, and it was only right that he should be able to trade mark his name.
This latest ruling, from the most senior court in the European Union, serves as a useful reminder that exceptionally well-known celebrities may find it easier to register their name (or persona) as a trade mark, even against a landscape of similar marks. Conversely, however, when it comes to enforcing his Messi mark (against a fictional mark for ‘Mossi’, for example), his fame and reputation may also negate a likelihood of confusion and therefore limit his ability to take effective enforcement action.
For more information on trade marks, contact Gavin Stenton.
This article has been co-written with Hannah Fricker, a trainee solicitor in the commercial, IP and IT team.