The Messi vs. Prime dispute isn’t the only trademark battle Lionel Messi has had to fight!
In 2011, Lionel Messi filed an application with EUIPO for the word – figurative mark “MESSI”, primarily for clothing, footwear and sports goods.
However, the owner of the earlier “MASSI” trademark filed an opposition against the registration of Messi’s trademark, and the case was resolved by the CJEU’s judgment of 17 September 2020 in favour of Lionel Messi.
The key question was: does the mere similarity in the sound and visual appearance of trademarks always imply a risk of confusion?
It turns out that it does not – in its judgment, the CJEU pointed out that when assessing a conflict between trade marks, it is not only the visual and phonetic aspects that matter, but also the associations evoked by the mark in question.
It was held that Lionel Messi’s surname is sufficiently recognisable that the average consumer associates it with a specific person, and this creates a clear conceptual distinction from the MASSI mark.
This is an example of how the assessment of trademark similarity does not end with a comparison of letters, but that its reputation, context and the way in which the mark is perceived by the relevant public are also important.
