The European Court has issued its decision in the case – 449/18 P EUIPO v Messi Cuccittini and C-474/18 P J.M.-E.V. e hijos v Messi Cuccittini.
This dispute concerns an attempt by one of the most famous footballer in the world for all time Lionel Messi to register the following European trademark in 2011 for clothes and shoes:
Against this application an opposition was filed by a Spanish company based on early registered trademark for MASSI for the same goods.
The EUIPO upheld the opposition finding both signs similar. From phonetic and visual point of view they are very similar due to the one letter difference.
From conceptual side, the fact that the word Messi refers the the well-known footballer Lionel Messi was not enough to overcome the similarity because only part of the consumers are interested in the football as a sport.
The decision was appealed. The General Court of the EU annulled it entirely.
According to the Court, both marks are not similar and the reason for this conclusion is that MESSI is a word that consumers will automatically refer to the particular footballer. This will make the necessary difference due to which a confusing between the signs is not possible.
The EUIPO retorted that the footballer didn’t claim any reputation in the initial proceeding and there were no evidence submitted in that regard. That’s why the Office didn’t take into account this fact, the official procedure requires reputation to be proved.
The Court clarified that some publicly well-known facts have to be considered by the Office without they to be proved. In the case at hand the footballer reputation is such a fact.
Although this decision is logical it arises some question.
It is a fact that Leonel Messi is very famous as a whole. But is is a fact that brands such as CoCa Cola, Nike, Apple are so famous as well.
From that perspective is this decision means that such brands don’t have to prove their reputation in disputes before the EUIPO any more.
And what about the McDonald’s case from the last year when the company lost its EU trademark for Big Mac due to insufficient evidence for acquired reputation provided in the procedure. The fact is that most of the people regard Big Mac as a product by McDonald’s.
It will be interesting to what extent this decision by the European Court will reflect the future practice of the EUIPO and all national Patent Offices in the EU.