#TMLaw – The setbacks of the application for registration of the figurative mark “MESSI” at the EUIPO

The multi-balloon d’or Lionel Messi has filed several European trademarks with varying degrees of success.

One of them encountered an obstacle that proved to be major, whereas, from our point of view, ways to overcome these obstacles could have been used.
The trademark application in question is the European application 010181154 filed on 08.08.2011, not yet registered. It is a sign with a stylized “M” with a MESSI notation in a specific caligraphy where the E is in another color and another calygraphy.

This filing was made without knowing of an earlier word mark, “MASSI”, which its holder Mr. Jaime Masferrer Coma raised in the context of an opposition to the registration of the “MESSI” mark, in November 2011 in essence on the basis of an argument of risk of confusion between the two signs for sporting goods.

In 2013, the European Intellectual Property Office (EUIPO) decided to reject the registration of the mark  “MESSI” mark.

Lionel MESSI then filed an appeal.

In April 2014, EUIPO rejected MESSI’s appeal, arguing in essence that there would be visual and auditory similarity between the two signs.

Lionel MESSI filed an appeal before the European Union Court (EUT) to seek the annulment of the EUIPO decision.

On April 26, the EUT decided in favor of Lionel MESSI. The EUT considered in essence that Lionel MESSI’s reputation is such that a consumer would necessarily associate the MESSI mark with the footballer, and concluded that there was no likelihood of confusion.

So it was a victory for Lionel MESSI, but the owner of the “MASSI” mark has filed an appeale.

To follow up closely …

This dispute illustrates, on the one hand, the importance of constituting IP rights as soon as possible, especially when international fame is not indisputable, and to avoid years of procedure and high costs. On the other hand, it appears that it is also essential to carry out availability searches including signs similar to the one whose protection is sought, and not to be limited to an identical search.

Expertise in these questions can help avoid litigation …

In fact, an earlier filing would not have had a major impact in the case of MESSI because the “MASSI” mark was filed on 27/11/1996, while Lionel MESSI was still only 9 years old …

SOPERYAH IP