The Catalan company specializing in bicycles that owns the Massi trademark opposed Lionel Messi’s application to register his personal trademark, “Messi,” citing visual and phonetic similarities. And at first glance, the Massi and Messi logos are indeed similar.
The dispute dates back to August 2011, when Leo, then playing for Barcelona, applied to the EUIPO (European Union Intellectual Property Office) to register the MESSI trademark together with its associated logo, for clothing, footwear, and sporting goods.
A few months later, in November of that same year, Jaime Masferrer Coma, head of the MASSI company, decided to oppose the application to register the “MESSI” trademark. The opposition argued that registering the Messi trademark would create a “likelihood of confusion” between the two marks, since his registered trademark Massi covered bicycles, helmets, and sportswear. The two marks therefore fell within the same class.
Several months later, the European Union Intellectual Property Office (EUIPO) ruled in favor of the MASSI trademark, so Messi appealed to the General Court of the European Union, which sided with him, finding that his fame “neutralized the visual and phonetic similarities between the two signs and ruled out any likelihood of confusion.”
But why was Messi allowed to register a trademark similar to another one in the same Nice class?
The EU court held that the reputation of a person who applies to register their name as a trademark must indeed be taken into account.
“The General Court did not err in finding that the reputation of Mr. Messi Cuccittini (Lionel Andrés Messi) was a relevant factor in establishing a conceptual difference between the terms ‘Messi’ and ‘Massi,’” the judgment explained. Messi’s reputation comes down to the fact that he is “a world-famous football player and, as a public figure, this was a well-known fact, that is, a fact that anyone may know or that can be learned from generally accessible sources,” the CJEU explained.
In the end, Messi beat Massi
The legal proceedings ended in 2020 in favor of the soccer player from Rosario, on the grounds that “the soccer player’s fame neutralized the visual and phonetic similarities between the two signs and ruled out any likelihood of confusion,” since he is a “public figure” of “worldwide fame.”
The CJEU also added that the “MASSI” and “MESSI” logos are “conceptually different,” and it therefore dismissed the two appeals filed against the General Court’s judgment that had ruled in the player’s favor.
In the end, Lionel Messi was able to develop his brand without any issues — here is the link so you can visit it, along with the website of his Messi store. If you have any questions about trademark registration, feel free to contact us, as we specialize in intellectual property.
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