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Lionel Messi, famous Barcelona and Argentina football hero has succeeded in registering his name as a European trade mark, covering a wide range of products including jewellery, fragrances and sports equipment. However, the path of the trade mark application was not straightforward as Massi, the well-known Spanish cycling brand, opposed the Messi trade mark application, on the basis that the two trade marks were extremely similar and as a result there was a likelihood of consumer confusion. The EUIPO opposition decision found in favour of Massi, on the basis that the two marks MASSI and MESSI are almost identical visually and phonetically.

In an appeal filed at the General Court – the EU’s second-highest Court – the EUIPO decision was reconsidered. In their decision, handed down on 26 April 2018, the General Court of the European Union held that the level of fame enjoyed by Lionel Messi was sufficient to dispel the likelihood of consumer confusion, even though there may be similarities between the trade marks MASSI and MESSI and overlap where the respective goods are concerned.

The Court stated that Messi’s fame “counteracts the visual and phonetical similarities between his trademark and the trademark MASSI”. It added that “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”. Furthermore, the Court commented that “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”.

It appears from this decision that in a trade mark dispute, a trade mark with greater distinctive character will always enjoy a stronger position. However, the “match” may not be over yet… as the General Court’s decision may be appealed to the Court of Justice of the European Union!

If you wish to discuss this topic further, please contact Philippa Frayne – Senior Trade Mark Attorney, or any member of the Edwin Coe Intellectual Property team.

Edwin Coe LLP is a Limited Liability Partnership, registered in England & Wales (No.OC326366). The Firm is authorised and regulated by the Solicitors Regulation Authority. A list of members of the LLP is available for inspection at our registered office address: 2 Stone Buildings, Lincoln’s Inn, London, WC2A 3TH. “Partner” denotes a member of the LLP or an employee or consultant with the equivalent standing.

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