MESSI VS. MASSI

At the World Cup in Russia, the Argentine team with its superstar Lionel Messi came to an end after the round of sixteen. The well-known footballer was more successful in a trade mark dispute. Messi can have MESSI registered.

In August 2011, Lionel Messi filed with the EUIPO the word/figurative mark MESSI together with logo, among other things for clothing, footwear and gym and sports articles.

A Spanish company, which holds the trade mark MASSI, opposed the registration of the mark. MASSI is registered, among other things, for clothing and footwear. The opposing company relied on likelihood of confusion.

The EUIPO upheld the opposition and granted the opposition.

The footballer's appeal against the decision was dismissed by the EUIPO. The Office based its decision on confirmation of a likelihood of confusion. The marks were similar to each other because their dominant elements, the terms MASSI and MESSI, were nearly identical in visual and phonetic terms, and any conceptual distinction would possibly only be made by part of the relevant public.

Lionel Messi also challenged this decision – this time with success.

The court's decision on MESSI vs. MASSI

The General Court (EuG) set aside the decision of the EUIPO by judgment of 26.04.2018 – Az. T-554/14 (Press release of 26.04.2018) .

In the view of the court, the opposing marks are indeed visually and phonetically similar. However, the court criticized the assessment of conceptual similarity. Thus, it cannot be assumed that Mr Messi is only known to that part of the public which is interested in football and sport in general. For he is a well-known person of public life who can be seen on television and of whom there is regularly speaking on television and radio. A substantial part of the relevant public will mentally associate the word "Messi" with the name of the famous footballer and will therefore perceive the word "Massi" as conceptually different.

Conclusion

The fame of the footballer leads to the visual and phonetic similarity of the marks being neutralized and thus a likelihood of confusion being ruled out.