The matter at hand
In 2011, Lionel Adrés Messi Cuccittini (hereinafter: ‘Messi’) filed a European figurative trade mark registration containing his name in classes 9, 25 and 28. The Spanish trade mark holder, Jaime Masferrer Coma, filed a notice of opposition against the trade mark of Messi on the basis of his earlier European trade mark ‘MASSI’ which had been registered for identical goods. On 18 May 2012 the trade mark rights of ‘MASSI’ were transferred to an intervener J.M.-E.V.
In 2013, the Opposition Division of the EUIPO upheld the opposition for all the goods in question (paragraph 13). Also the Board of Appeal upheld the finding of the Opposition Division, in which they concluded that there was a likelihood of confusion between the marks due to the fact that the dominant elements of the marks at issue are almost identical visually and phonetically and that a conceptual differentiation will only be made by part of the relevant public.
The above led to the appeal of Messi before the General Court of the European Union for annulment of the decision of the EUIPO. The General Court considered that the reputation of Messi counteracted the visual and phonetic similarities between ‘MESSI’ and ‘MASSI” and excluded the likelihood of confusion. The EUIPO and J.M.-E.V. lodged appeals against the judgment of the General Court.
The judgment of the ECJ
In this matter, the ECJ dismisses both appeals of the EUIPO and J.M.-E.V. In doing so, the ECJ holds that the General Court did not err in considering the possible reputation of the person who is applying for the registration of his name as one of the relevant factors in assessing the likelihood of confusion, in so far that his reputation could be of influence to the public’s perception of the mark (see C-51/09 P Becker/Harman International Industries). Therefore the reputation of Messi is a relevant factor for the purpose of establishing a conceptual difference between the term ‘MESSI’ and the term ‘MASSI’.
Furthermore, the ECJ dismisses the argument of J.M.-E.V. that the General Court has erred in law basing itself on facts and evidence produced for the first time before the Court of First instance. The ECJ observes that the reputation of Messi has already been an issue in the proceedings in the context of the overall assessment of the likelihood of confusion, within the meaning of Article 8(1)(b) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, and in particular as regards the possibility that the conceptual differences between the sign at issue neutralise the visual and phonetic similarities of those signs. The court in First Instance under appeal, reiterated the view that the reputation of the football player Messi is such that it is not possible that, in the absence of concrete indications to the contrary, that the average consumer confronted with the sign MESSI disregards the meaning of that sign as referring to the name of the famous football player and perceives it primarily as a trade mark, among others, for such goods. Moreover, the ECJ recalls that the merely stating of well-known facts cannot be regarded as new (C-88/11 P Electronics/OHIM) (paragraph 73).
Lastly, the ECJ considers that the argument of J.M.-E.V to the effect that the General Court could not rely on the case law of de ECJ in C-361/04 P Picasso and others v. Commission of the European Communities, is based on a misreading of the judgment. After having noticed that the signs are conceptually different, the General Court was entitled to apply the case-law.