Topical Trade Marks: Lionel Messi tells Massi to get on its bike

Barcelona and Argentina football superstar Lionel Messi recently succeeded in registering his name as a trade mark following a lengthy legal battle. In doing so he follows a line of other celebrities including David Beckham and Cristiano Ronaldo. ‘Lionel Messi’ has now been registered as an EU trade mark covering a wide range of products including jewellery, fragrances and sports equipment.

Messi’s application to trade mark his name was tackled head on by Massi, the well-known Spanish cycling brand, whose opposition centred around its claim that ‘Messi’ and ‘Massi’ were extremely similar and were likely to give rise to confusion amongst consumers.

Massi had previously applied for and registered its own EU trade mark in 1998, while Messi’s application to trademark his name was made to the European Union Office for Intellectual Property (EUIPO) back in 2011.

The EUIPO agreed with Massi’s argument, stating that the words “…‘Massi’ and ‘Messi’, are almost identical visually and phonetically”.

Those wishing to register trade marks need to be cognisant that a trade mark need only be similar to an existing trade mark to come under scrutiny from either the EUIPO or the UKIPO as applicable.

After the EUIPO decision that only some people would be aware the two were different, the EU’s second-highest court – the General Court – recently took another look. It disagreed with the original decision and granted Messi the rights to trade mark his name.

In a ruling handed down on 26 April 2018 the General Court of the European Union held that the level of fame of the world-famous player was sufficient to dispel the likelihood of any confusion, even if there were any apparent similarities between the marks and overlap in products. The Court stated that Messi’s level of fame “counteracts the visual and phonetic similarities between his trademark and the trademark ‘MASSI’.” It added: “It seems unlikely that an average consumer of those goods will not directly associate, in the vast majority of cases, the term ‘Messi’ with the name of the famous football player.” It also stated: “Mr. Messi is, in fact, a well-known public figure who can be seen on television and who is regularly discussed on television or on the radio.”

Looking at the decision overall, it would appear to be the case that a trade mark with the greater distinctive character will always have a stronger position in a trade mark dispute.

Having said all that, the General Court’s decision may be appealed to the Court of Justice of the European Union so there could yet be extra time to be played out in this dispute.

This position can be compared with a recent trade mark dispute in the US where hip-hop star Dr Dre lost a long-running trade mark dispute against a gynaecologist with a similar name, Dr. Drai. Although the names look similar and are pronounced the same way, they belong to two very different people. The case commenced in 2015 when the medical professional Draion M Burch tried to trademark the name ‘Dr. Drai’. Dr Dre objected, claiming the similarity could cause confusion, especially as his closely named opponent wanted to sell audio books and seminars under the mark. The United States Patent and Trademark Office disagreed with Dr Dre and dismissed his case. In a ruling made last week, it said that, while the two names were similar, Dr Dre had failed to show that people would be misled into buying Dr. Drai’s products as a result of any confusion. Given their very different careers, it might seem hard to ponder that anyone might get these two muddled up.

One conclusion then is that if you are famous enough, there is unlikely to be confusion by registering your name as a trade mark as to what it represents.