Lionel Messi’s trouble to protect his name as a trademark – why you should register your trademark even if it is your own name !

Like every year during the summer transfer window, media discuss the value of football players. But what about the value of players’ names ? Some of the most famous athletes file their name as a trademark to capitalize on what has become a brand. In a recent case, the EU General Court had to decide if Lionel Messi was entitled to register his name as an EU trademark, taking into account an alleged similar earlier trademark.

In the course of 2011, Lionel Messi filed his name in combination with a logo, as an EU trademark application for amongst others sports clothing, footwear and equipment. The owner of an earlier mark “MASSI” for identical and similar goods – Mr. Jaime Masferrer Coma – contested Lionel Messi’s trademark application and filed an opposition.

In 2013 the EUIPO agreed with the owner of “MASSI” and upheld the opposition. It considered that the signs were sufficiently close to each other visually and phonetically and that only part of the relevant EU public would perceive a difference in the conceptual meaning.

Unsatisfied with that decision, the multiple winner of the Ballon d’Or brought the case before the General Court. In its recent decision, the Court confirmed the visual and phonetical similarity between the signs but in contrast with the EUIPO, it concluded that the signs were different conceptually speaking. According to the General Court, the reputation enjoyed by Lionel Messi does not only concern the part of the public which is interested in football and sports in general. Messi is a well-known public figure who appears very often on television – including in commercials – and who is regularly commented on in the media. Even if it is possible that some consumers may not know him, it won’t be the case of the average consumer of sports clothing and equipment.

The General Court concluded that even if the signs share an average visual and phonetical similarity, the conceptual difference sufficiently distinguish the signs to exclude any likelihood of confusion to arise between the trademarks. This decision will now be challenged by the Court of Justice of the European Union since Mr. Jaime Masferrer Coma filed an appeal.

The lesson to be learned is that it is not because the trademark you applied for is your own name that it won’t be refused due to earlier rights. We therefore recommend you to protect your assets and register your name as a trademark sooner rather than later to reduce as much as possible the risk of third parties obtaining earlier registered rights. Unless you are as famous as Lionel Messi of course…

31.08.2018 - Article by  Claire Godefroid,  IP Attorney

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