What a Messi Battle
After a long nine-year battle superstar football ace, Lionel Messi can register his name as a trade mark.
The European Court of Justice (ECJ) dismissed an appeal from Spanish cycling company Massi overturning the EUIPO initial decision on the matter.
Lionel Messi had approached filing his name as a trade mark back in 2011 in relation to sportswear. However this was not as easy as Lionel would have hope as Massi opposed and argued the similarity between their trade marks would cause confusion in the eye of the public (which seems hard to believe).
Messi has been crowned world football player of the year a record six times and is the world’s highest-paid soccer player, according to Forbes. He is also widely considered one of the world’s greatest soccer players having scored his 600th professional goal last month and is the all-time highest scorer for both Barcelona and Argentina’s national team.
The ECJ said that the Messi’s reputation alone could be taken into account when weighing up whether the public would be able to tell the difference between the two brands. As such the ECJ upheld a ruling by the EU’s General Court in 2018 that the footballer was too well known for confusion to arise.
Massi was successful in its initial challenge to the Barcelona striker’s application where the examiner considered both the similarity of the application and prior mark and the goods being covered. When Lionel Messi brought an appeal to the General Court, the court considered the footballer reputation and ruled in his favour.
The decision by the ECJ goes to show that reputation which has been built and is widely known globally (let alone just the EU in this case) can distinguish distinctiveness between trade marks and is considered not to cause confusion in the eyes of the public. However, this decision should be taken with caution because as a business starting up you will not be considered in the same category as Lionel Messi and the approach is advised to be proactive and register your trade marks sooner rather than later as the courts may consider your reputation is not enough to distinguish itself with others already in the market or with prior registered marks.
Briffa advises on all aspects of trade mark law and practice and offers free consultations to all new clients. If you would like to have a call or a meeting at our offices in the Business Design Centre in London, please call 020 7288 6003 or email [email protected]
Written by Hasnath Ahmed, Solicitor