EU 28 Sep 2020
As we all know by now, the iconic Argentine football star Lionel Messi is used to winning matches on the big pitch. After a long-running trademark dispute with the Spanish bicycle manufacturer Massi, he has scored even outside his daily arena.
The dispute originates from the year 2011, when Messi applied to have his last name and personal logo trademark protected. Messi submitted two applications, one of which included “Clothing, footwear, headgear”, “Games and playthings” and “Gymnastics and sporting articles”. This was opposed by the bicycle company Massi with reference to their previous word marks for MASSI (registered for clothes and footwear, among other things). The opposition succeeded before the EU Intellectual Property Office and later before the EUIPO Boards of Appeal. The opposition was justified on the basis that neither ‘Messi’ nor ‘Massi’ are meaningful words for most consumers and the conceptual difference based on the fame that Lionel Messi enjoys among football fans only applies to a part of the public, who is interested in football and sports in general.
In 2018, Messi appealed against the decision before the General Court of the European Union, and this time the outcome was another. The Court ruled that the Boards of Appeal‘s analysis of conceptual similarity was incorrect, and should have taken into account factual circumstances such as Messi’s reputation that would go beyond the purely sporting framework and this fame would enable him to become a public figure, including the media. The court concluded that Messi’s reputation as “the most famous player in the world in recent years”, also should have been regarded.
The European Court of Justice thus ruled in favour of Messi and granted him registration of his surname as a trademark.
Photo: Lionel Messi 1st 3D live coverage Nova. Barcelona – panathinaikos (Champions league 2010-2011). The picture is partly cropped. Copyright: Villa/Intime Sports. Flickr License/CC.