Does the notoriety of an athlete allow him to dispense with registering his trademark?
Although the answer seems obvious for sports fans, it is less so in justice, as evidenced by a dispute concerning the Argentine soccer player Lionel Messi.
On April 26, 2018, the Court of Justice of the European Union finally allowed the Lionel Messi to register his “Messi” brand for clothing, shoes and sports items when it had been rejected in the past.
In August 2011, Lionel Messi applied for the registration of his trademark with the European Union Intellectual Property Office (EUIPO). This application for registration was intended to protect his brand, in particular for clothing, shoes and various sports items, as well as his acronym.
It was then decided that the soccer player trademark presented a risk of confusion with Massi cycle brand, which also offers sports items. This trademark, previously registered for similar items since the signs and trademarks were relatively similar both visually and phonetically.
Lionel Messi then took the case to the European Court of Justice (ECJ), which allowed him to win his case.
The EU Court concluded that, although the trademarks had similarities, the conceptual differences between them negated the visual and phonetic similarities. The comparison of two trademarks does not stop at the visual and phonetic similarities. Conceptual elements such as that a person registering a trademark is also known to a wide audience should also be considered.
The EU Court ruled that Lionel Messi is “a public figure known by most informed and reasonably attentive people” and although it is possible that some consumers have never heard of Lionel Messi, “this will not be the case for the typical average consumer (…) who buys sportswear or sports items” (Judgement No. T-554/14 of the EU Court of April 26, 2018, points 52 and 54).
This decision will allow the Argentine player to benefit from protection of his surname in the countries in which his trademark is registered and to prosper even off the soccer field.
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