A critical evaluation of the Court of Justice of the European Union decision in Joined Cases C-449/18 P and C-474/18 P Lionel Andrés Messi Cuccittini and JM EV e hijos SRL v European Union Intellectual Property Office EU:C:2020:722: Is an individual or entity’s reputation with the public at large more important than common sense?
Introduction
This essay critically evaluates the European Court of Justice’s (ECJ) decision in Joined Cases C-449/18 P and C-474/18 P Lionel Andrés Messi Cuccittini and JM EV e hijos SRL v. European Union Intellectual Property Office EU:C:2020:722 to determine whether an individual or entity’s reputation with the public at large is more important than common sense. To achieve the required analysis in this essay, it is first necessary to summarise the case’s facts before then setting out the ECJ’s judgement to contextualise this analysis. Then, more specifically, this essay evaluates the Court’s decision because it is hypothesised that an individual’s or entity’s reputation is more important to whether a trademark is granted than if a similar trademark already exists. Finally, this essay then concludes by summarising the key points to have been derived from the analysis undertaken to ascertain the accuracy of the aforementioned hypothesis.
Main Body of Analysis
(a) Facts of the Case
The world renowned Argentine and now Paris St Germain footballer, Lionel Messi filed an application to register ‘MESSI’ as a trademark within the jurisdiction of the European Union (EU) in August 2011 (see Giannino, 2018 and Mancinella, 2018). However, it was only after 9 years of extensive legal proceedings that the ECJ determined that Messi was permitted to register his name as a figurative sign as a trademark for a sportswear brand in September 2020 despite a Spanish cycling company, under the name MASSI, opposing the application for identical goods (see Giannino, 2018 and Mancinella, 2018). This is because although the European Union Intellectual Property Office (EUIPO) believed that there was the potential for confusion due to the possibility of conceptual differentiation by a proportion of the general public, the General Court took a contrary view (see Giannino, 2018 and Mancinella, 2018). Put simply, the reason for this difference in opinion centred upon the fact that Messi is an extremely well-known public figure who most people in the world today are aware of, even if they are not football fans (see Giannino, 2018 and Mancinella, 2018).
(b) ECJ Judgement
Even though both the EUIPO and the aforementioned Spanish cycling company appealed to the ECJ, the Court confirmed that no confusion would arise between the two trademarks. This is because, on analogy with the decision Case C-361/04 Ruiz-Picasso v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) [2006] ETMR 29, Messi’s reputation as a football player proved more important than any similarities between the figurative sign ‘MESSI’ and the word ‘MASSI’ (Joined Cases C-449/18 P and C-474/18 Messi, paragraph 46). It was the ECJ’s view that Messi’s reputation did not need to be substantiated and that the EUIPO should have accounted for this when evaluating the conceptual similarity, or lack thereof, between the two signs (Joined Cases C-449/18 P and C-474/18 Messi, paragraph 74). Based upon the respective goods that were being sold by MASSI and that were to be sold under Messi’s sign, along with the type of consumers and their attention to detail, the ECJ thought that the difference between the two signs for sufficient for the average consumer. This view was then only further emphasised by the fact that the somewhat insignificant part of the European public that would not directly link the figurative sign for ‘MESSI’ with the famous footballer was not sufficiently significant to find any claim for confusion (Joined Cases C-449/18 P and C-474/18 Messi, paragraph 35).
(c) Is reputation with the general public more important than common sense for determining whether a trade mark should be registered in the EU?
With regard to the matter of ‘reputation’, for a trade mark in the EU to benefit from enhanced protection, it needs to have a reputation in a “substantial part” of the Union (Case C-301/07 PAGO International GmbH v. Tirolmilch registrierte Genossenschaft mbH [2010] ETMR 5, paragraphs 29-30). Additionally, the link between disputing signs needs to be sufficient for consumers (Joined Cases C-581/13 P and C-582/13 P Intra-Presse SAS v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) [2015] ETMR 6). This is because, generally, the appreciation of the likelihood of confusion is dependent upon a broad array of factors and, especially, a trade mark’s market recognition, the association with used or registered signs, and the similarity between a trade mark and the sign and the goods or services involved identified (Case C-171/06 TIME ART Uluslararasi Saat Ticareti ve dis Ticaret AS v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) [2007] ETMR 38, paragraph 31). Nevertheless, the ECJ’s judgement still served to effectively blur the reputation of a trademark with a given individual or entities personal notoriety or fame (Case C-51/09 P Becker v. Harman International Industries Inc [2010] ETMR 53, paragraph 37). This is because the ECJ expressed the opinion that Messi, as the surname of an internationally-renowned footballer, amounted to common knowledge known by virtually anyone globally already or that could be easily discovered through generally accessible resources (Joined Cases C-449/18 P and C-474/18 Messi, paragraph 74).
Conclusion
It is clear from the analysis to have been completed in Joined Cases C-449/18 P and C-474/18 Messi that there is scope for a well-known individual or entity to be able to rely upon their name’s reputation to exclude the potential of confusion. This is because the decision of the ECJ in this instance would seem to mean that the famous can protect a trade mark that includes their name, regardless of the relevant public’s attention, the goods or services identity, or the significant similarity visually and phonetically (Martin, 2020). However, the reality is that this would not seem to be the common sense approach to dealing with the recognition of trade marks in such circumstances. That this should prove to be the case is in view of the fact that, on the face of it at least, there would seem to have been a significant level of similarity between the trademark of ‘MASSI’ and the proposed figurative sign of ‘MESSI’ that was to be registered to cover similar goods within the jurisdiction of the EU.
Bibliography
Case C-361/04 Ruiz-Picasso v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) [2006] ETMR 29
Case C-171/06 TIME ART Uluslararasi Saat Ticareti ve dis Ticaret AS v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) [2007] ETMR 38
Case C-301/07 PAGO International GmbH v. Tirolmilch registrierte Genossenschaft mbH [2010] ETMR 5
Case C-51/09 P Becker v. Harman International Industries Inc [2010] ETMR 53
Giannino, M, (2018) ‘Messi like Picasso? General Court Rejects Opposition Against Registration as an EUTM Featuring the Name of Lionel Messi’ Journal of Intellectual Property Law and Practice,18, 684
Joined Cases C-581/13 P and C-582/13 P Intra-Presse SAS v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) [2015] ETMR 6
Joined Cases C-449/18 P and C-474/18 P Lionel Andrés Messi Cuccittini and JM EV e hijos SRL v. European Union Intellectual Property Office EU:C:2020:722
Mancinella, M. (2018) ‘The Visual, the Phonetic and the Famous: Trade Mark Similarity in the Wake of Messi v EUIPO’ European Intellectual Property Review, 40, 665
Martin, S. (2021) ‘Lionel Messi v EUIPO: 2-0 Court of Justice blows final whistle on opposition proceedings involving Leo Messi’ Journal of Intellectual Property Law & Practice, 16(1), 9