Home » Trade Marks » Lionel Messi’s EU Trade Mark: how ‘Fame’ can change the conceptual comparison of marks

Lionel Messi’s EU Trade Mark: how ‘Fame’ can change the conceptual comparison of marks

Keltie LLP

K2 IP Limited

About IPcopy

IPcopy is an intellectual property related news site covering a wide variety of IP related news and issues. We will also take the odd lighthearted look at IP. Feel free to contact us via the details on the About Us page.

Disclaimer: Unless stated otherwise, the contributors to IPcopy (the "IPcopy writers") are patent and trade mark attorneys or patent and trade mark assistants at Keltie LLP or are network attorneys at K2 IP Limited. Guest contributors will be identified.

This news site is the personal site of the contributors and is not edited by the authors' employer in any way. From time to time however IPcopy may publish practice notes, legal updates and marketing news from Keltie LLP or K2 IP Limited. Any such posts will be clearly marked.

This news site is for information purposes only. Information posted to this news site is not legal advice and should not be taken as such. If you require IP related legal advice please contact your legal representative.

For the avoidance of doubt Keltie LLP and K2 IP Limited have no liability as to the content of IPcopy and any related tweets or social media posts.

Privacy Policy

IPcopy’s Privacy Policy can be viewed here.

messiA judgement issued by the EU General Court on 26 April 2018 ended opposition proceedings started in 2011 over Lionel Messi’s application to register the mark MESSI + Logo as a EU Trade Mark. The Barcelona striker can finally see his surname registered. The full judgement is available in French or Spanish here.


Messi already owned a number of EU Trade Mark Registrations, in particular, for his full name LIONEL MESSI (EUTM Reg. 6353131), for LE0 MESS1 (stylised) (EUTM Reg. No. 9118852) and for his signature (EUTM Reg. Nos. 6353296 and 10394476), but the trade mark application in issue (EUTM Appl. No. 10181154) was just for the surname MESSI combined with a Logo (see the blog image at the top of this post).

The EUTM application sought registration of the mark in respect of goods in classes 9, 25 and 28. The most interesting legal arguments were submitted in relation to the application for ‘gymnastic and sporting articles not included in other classes’ in class 28 and on these goods we will focus our review.

In November 2011, Mr Jaime Masferrer Coma, owner of the earlier EUTM Reg. Nos. 414086 and 3436607 for MASSI filed an opposition to Messi’s above mentioned EUTM application on the grounds of similarity of the marks, identity/similarity of the goods and ensuing likelihood of confusion (Art. 8.1.b. EUTMR 2017/1001). The Opponent’s former EUTM Registration covered, in particular, ‘helmets for cyclists’ in class 9, ‘bicycles’ and other bicycle parts and accessories in class 12 and ’gloves, accident protective shoulder, elbow and knee guards’ in class 28.

During the opposition proceedings, Mr Masferrer Coma transferred ownership his marks to the company JM-EV e Hijos, so the final judgement is in fact against this company.


During the opposition proceedings before the EUIPO, both Opposition Division and Appeal Board (hereinafter referred to collectively as ‘the EUIPO’) had ruled that Messi’s EUTM application should be rejected.

The EUIPO considered that the element MESSI in the footballer’s application was by far the dominant element and it was phonetically, visually and conceptually similar to the mark MASSI. In relation to the conceptual similarity, we note, in particular, that the EUIPO reasoned that the words MESSI and MASSI might be perceived by part of the public as Italian-sounding surnames, but that the largest proportion of consumers would not attribute any conceptual meaning to the two words.

The goods covered by the respective marks were considered identical in classes 9 and 25 and similar or very similar in class 28, and the EUIPO concluded that there was likelihood of confusion between the marks.

In overturning the EUIPO’s decisions, the EU General Court disagreed with the EUIPO on two key points:

Firstly, the EUIPO was wrong in assessing that for the largest part of the public the word MESSI would be devoid of any conceptual connotation and that the fame of the footballer would confer the word MESSI a meaning beyond that, perhaps, of an Italian surname only for the part of the public who has an interest in football, or in sport in general.

The EU General Court considered that Messi’s fame is such that Mr Messi is a public figure, who would be recognised by any average consumer who reads newspapers, watches TV, listens to the radio.

Secondly, the EUIPO erred in assessing the conceptual association between the word MESSI and the famous footballer against the general public. The analysis should have taken into account the relevant public. Indeed, in relation to the goods concerned, in particular sports equipment and clothing, even if not limited to football, the relevant consumers are not the general public, but average consumers who buy sports clothing and equipment.  It follows, that for this section of the public, it would be unlikely not to associate the word MESSI with the famous footballer.


Fame in a name can have a strong impact on the conceptual connotation of an otherwise unremarkable word and conceptual difference can in itself be sufficient to rule out the overall similarity of marks and/or likelihood of confusion between them.

Messi can now add another trade mark to his assets and sets a useful precedent for many celebrities whose name might be similar to third party prior registered marks.

Manuela Macchi  15 May 2018

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s

This site uses Akismet to reduce spam. Learn how your comment data is processed.

%d bloggers like this: