In a press release, the Court of Justice of the European Union reported on its judgment of 17 September 2020 in Joined cases C-449/18 P EUIPO v Messi Cuccittini and C-474/18 P J.M.-E.V. e hijos / Messi Cuccittini. In the meantime, the judgement is available in Spanish and French.
Football player Lionel Messi (Messi) had applied for the mark for, among others, the goods “clothing, footwear and gymnastics and sporting articles” against which an opposition was submitted based on the word mark MASSI protected in the EU for, among others, the goods “clothing, footwear, helmets for cyclists, protective clothing and gloves”. While the EUIPO and the Board of Appeal concluded that a likelihood of confusion was given between the signs MASSI and MESSI, the General Court took the position that the reputation of the football player Messi neutralized the visual and phonetic similarities between the signs and excluded a likelihood of confusion. In its judgment of 19 September 2020, the Court of Justice dismissed the legal remedies of the EUIPO and the Opponent.
The Court held that, just like the reputation of the earlier trademark, the reputation of the person applying for his name as a trademark is one of the relevant factors in assessing the likelihood of confusion, as that reputation may influence the relevant public’s perception of the mark. The Court also noted that the reputation of Messi being the family name of a world-famous football player and public figure was a well-known fact that is likely to be known by any person or that may be ascertained from generally accessible sources. At the time of its decision, the EUIPO should therefore have considered Messi’s reputation ex officio – without the applicant having to submit proof in this regard – when assessing the conceptual similarity of the signs MASSI and MESSI. The Court made it clear that the assessment aiming to establish whether a sign has a clear and established meaning in the perception of the public relates to both the earlier mark and the contested sign.
The definition of the reputation of the name of a (supposedly) universally known public figure as generally known fact that everyone is familiar with or that can be taken from generally accessible sources and must therefore (automatically) be taken into account by the Office at the time of its decision, is problematic. Especially with regard to electronic media, which (permanently) produce their own stars, the question arises as to when a reputation is big enough to have to be taken into account by the Office or the Court on its own initiative when reaching a judgment. Different views and thus a diverging decision-making practice are preprogrammed here.
The obligation of the Office to examine whether not only the prior opposition mark but also the applied-for sign has a clear and specific meaning in the perception of the public also contradicts the previous approach in trademark law, according to which a trademark can only expand its scope of protection over time, for example through intensive use. In contrast thereto, a newly applied-for trademark is originally without any special scope of protection, apart from that which results from its original distinctive character. In German trademark law, the Eintragungsbewilligungsklage (Action for the grant of registration) according to Section 44 German Trademarks Act enables the unsuccessful applicant to assert those objections against the opposition mark with which he was legally excluded in the opposition proceedings due to their summary nature. EU trademark law does not know this legal instrument, so that opposition proceedings lead to a final decision between the parties. lt seems that the Court is trying to correct this shortcoming. However, this is not its job, but that of the European legislator.