Messi wins the match against Massi

The FC Barcelona player Lionel Messi presented the European Union trademark application No. 2011 to the EUIPO in 010181154 to distinguish products from classes 9, 25 and 28, under the following graph:

The same year, the owner of the earlier European Union trademarks Nos. 3436007 and 414086 BOULDERS (denominative), registered respectively in classes 25, 9 and 28, filed an opposition against said application, alleging the existence of risk of confusion and/or association (Article 8.1. b. of the RMC) between the trademark requested by Leo Messi and the previous trademarks around the badge BOULDERS.

After listening to the parties, in 2013 the EUIPO resolved, fully upholding the opposition formulated by the owner of the trademarks. BOULDERS, and thereby denying Leo Messi's request, arguing that there was a risk of confusion between the competing badges.

In 2014, the Argentine star filed an appeal against the denial decision, but the EUIPO rejected it, determining that there was a risk of confusion because its dominant elements -i.e. MESSI y BOULDERS– are practically identical, both verbally and phonetically.

Thus, Leo Messi decided to proceed before the higher court and in September 2014 appealed said denial decision before the General Court of the European Union (TG) on the grounds that the brands MESSI y BOULDERS They were perfectly compatible at the registry level, since the EUIPO had not considered the importance of the conceptual plane when analyzing the matter.

Well, after analyzing the case in depth, the TG handed down sentence on April 26, 2018, in which it has upheld Leo Messi's claims, thereby annulling the denial decisions of the EUIPO and therefore granting the Union trademark around the distinctive MESSI.

The arguments put forward by the TG in its ruling are the following:

1. Firstly, the TG points out that the signs that make up the conflicting trademarks present an average similarity at the graphic level, due to the fact that the dominant element of the trademark MESSI is extremely similar to the word element present in the brand BOULDERS.
2. However, the Court considers that the EUIPO made an error when comparing the signs at a conceptual level and considering that the Argentine footballer currently only enjoys a high degree of knowledge among the public interested in football and sport in general. .
3. Likewise, the TG insists on the idea that the renown of Leo Messi's surname makes it unlikely that the consumer will not associate the brand MESSI with the player's last name, as the products protected by the opposing badges are sports articles and clothing.
4. The TG therefore concludes that, despite the fact that the brands MESSI y BOULDERS are very similar, the conceptual differences between them are such that the graphic and phonetic similarities are neutralized. Furthermore, the Court notes that a significant part of the relevant public will associate the term “Messi” with the surname of the famous football player and, consequently, will perceive the term “Massi” as a conceptually different term.

As is usually the case, the analysis carried out and the arguments put forward by the TG to adopt this decision are, in our opinion, correct, insofar as the high degree of knowledge and dissemination that the FC Barcelona player has worldwide among the average consumer who buys sports-related products makes it difficult to believe that there could be a risk of confusion and/or association between the products offered by the brands. BOULDERS and the products offered under the surname that gives its name to the brand MESSI.

On the other hand, this decision only reinforces the protection that celebrities have in economic traffic through the registration of trademarks, taking into account the renown and high degree of diffusion that they enjoy as they appear in the media (press, TV, radio, internet, etc.) on a continuous basis.

In any case, it is worth remembering that the sentence can still be appealed before the Court of Justice of the European Union (CJ). We will see if with this goal the opponent gives up and Leo Messi manages to win the match, or if, on the contrary, the owner of the marks BOULDERS presents appeal, thereby giving excitement to the last minutes of the game.

We will continue to inform.

Author Manuel Minguez