Joined Cases C-449/18 P and C-474/18 P: EUIPO v Messi Cuccittini and P J.M.-E.V. e hijos v Messi Cuccittini (2020).
The Court of Justice of the European Union (“CJEU”) dismissed appeals against the General Court (“GC”)’s decision and confirmed that there was no likelihood of confusion between the marks MESSI and MASSI given the well-known reputation of the Argentine football player Lionel Messi. This landmark decision considered the reputation of the Applicant of a later-filed application to be a significant factor in determining likelihood of confusion with earlier registered marks.
In 2011, J.M.-E.V. filed an opposition against a EUTM application for MESSI
(Stylized) for clothing and sports equipment by Messi. The opposition was based on J.M.-E.V.’s prior EUTM registrations for MASSI for clothing, cycling helmets, gloves, and protective devices. The EUIPO upheld the opposition based on the phonetic and visual similarities between the marks and their overlapping coverage.
However, Messi appealed EUIPO’s decision before the GC, which overturned the EUIPO’s decision. The GC found that the marks MESSI and MASSI covered identical goods and had high phonetic and average visual similarities. But the GC held that there was no conceptual similarity between MESSI and MASSI given that the relevant public identifies “MESSI” with a famous football player.
On appeal of the GC’s decision by J.M.-E.V. and the EUIPO, the CJEU dismissed the appeals. J.M.-E.V. argued that Messi’s reputation should not have been considered in the likelihood-of-confusion analysis. However, CJEU rejected this argument, explaining that the Applicant’s reputation may influence the relevant public’s perception of a mark. Just as the reputation of the earlier mark factors into the analysis, so too is the Applicant’s fame is a relevant factor when assessing the likelihood of confusion.
The EUIPO’s main argument was that while “Messi” may be well known to a “significant part of the relevant public,” specifically the public interested in football and sports in general, the “relevant public” for the likelihood-of-confusion analysis comprised ordinary E.U. consumers who buy clothing and sporting goods. The CJEU held that Messi’s fame and reputation had been assessed based on the perception of the entire relevant public, i.e., ordinary consumers.
Therefore, the CJEU confirmed that the GC correctly considered Messi’s reputation in the likelihood-of-confusion analysis and affirmed the dismissal of J.M.-E.V.’s opposition the application for MESSI.
While it is reasonable to believe that consumers are not likely to be confused as to the source of goods designated by MESSI as opposed to MASSI given Lionel Messi’s fame, this decision opens the door to questions about the scope of protection accorded to the MESSI mark. Based on the logic of this decision, it could be argued that confusion would not be likely between MESSI and future applications for mark such as MOSSI, MUSSI, MASSY, and the like. But such an outcome would upend traditional jurisprudence that accords broad protection to famous marks. The ramifications of this decision therefore have yet to be played out. The decision is available in Spanish and French on EUIPO’s website via the link below.