By Amir Murshidi
Joys and tears. Incredibly dramatic matches we have watched in the 2018 FIFA World Cup. The much-loved, ever-so-popular game that unites us across the continents.
Spain and Portugal – we feel your sorrow. As for German fans, it was disheartening to watch their countrymen, defending champions leaving the pitch so soon, at group stage!!! We could not watch the footwork of Mats Hummels, Toni Kroos and Jerome Boateng at the finale and even shining stars like Suarez, CR7 and Messi had to pack their bags early and return home!
Speaking about Messi or Lionel Andrés Messi Cuccittini, the famous Argentinean and Barcelona club football player, thankfully, he did not lose in the General Court of the European Union!
The winner of Ballon d’Or awards for 5 times and 32 trophies with his club Barcelona has scored another goal at the General Court of the European Union after the court annuls the decision of the European Union Intellectual Property Office (EUIPO).
The case began on 23rd November 2011 when Jaime Masferrer Coma, the proprietor of the trademark “MASSI” (which were then transferred to a Spanish company, JM.-EV e Hijos, SRL) filed an opposition against the registration of Messi’s trademark (shown above). Messi initially filed a trademark application with the EUIPO bearing EU application no. 010181154 on 8th August 2011 in Classes 9, 25 and 28 in respect of clothing, footwear, headgear, gymnastic and sporting articles etc.
On 12th June 2013, the Opposition Division of the EUIPO upheld the opposition and refused the registration of Messi’s trademark on the grounds that the dominant element of the applied mark namely, the word “MESSI” is visually, aurally and conceptually similar with the prior registered mark “MASSI”. Furthermore, the goods which the marks were claiming for do overlap with one another as well. Messi had then filed an appeal with the EUIPO on 9th August 2013. Unfortunately, the EUIPO First Board of Appeal had also dismissed the appeal by a decision on 23rd April 2014 and concluded that there is a likelihood of confusion between the marks.
Unhappy with the EUIPO’s ruling, Messi brought the case before the General Court of the European Union on 25th July 2014. After several years of fighting, the General Court overturned the EUIPO’s decision and held that Messi’s trademark is distinctive.
In the judgement, the court stated that the marks are indeed visually similar. However, taking the presence of a figurative element in the Messi’s trademark into account, the General Court concluded that the degree of the visual similarity is rather average. The court had also affirmed the EUIPO’s decision that the marks are aurally very similar.
Conversely, the General Court found the EUIPO had wrongly decided that the marks are conceptually similar. The court pointed out that it is wrong to consider the reputation enjoyed by Messi concerns only certain part of the public namely, those who are interested in football and sport in general. The court 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.”
In addition, the EUIPO Board of Appeal should have examined whether a significant part of the relevant public was not likely to conceptually associate the term “Messi” with the name of the famous football player. The court further added that the goods offered by the marks for which a likelihood of confusion might exist, are, in particular, sports equipment and clothing, must be taken into account as well, even if they are not limited to football.
“It seems unlikely that an average consumer of the goods will not directly associate, in the vast majority of cases, the term “Messi” with the name of the famous football player.”
Although the marks are visually and aurally similar, the conceptual differences between them and Messi’s fame counteract the similarities. The General Court held that the degree of similarity between the marks is not sufficiently high to perceive the relevant public that the goods at issue come from the same undertaking or, as the case may be, from economically-linked undertakings. Accordingly, the General Court upheld Messi’s appeal.
Put aside his team current situation on the World Cup’s green field, Messi has already celebrated a triumph in the branding field. Penalty? Yes, he scored the goal at the IP battle!
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