When trade marks get Messi

Chris Goodwin, Leathes Prior

It’s been a long time coming, but mercurial Barcelona forward Lionel Messi has finally got what he always wanted. I’m sure when Lionel is looking back on his career, his five Ballons D’Or will pale in comparison to what he achieved last week. It took over seven years, but the European Court of Justice have decided that Lionel Messi should be allowed to register “MESSI” as a European Union Trade Mark. Congratulations Lionel. Well deserved.

The basis of the legal challenge was as follows - Lionel Messi appealed after the EU Intellectual Property Office (EUIPO) ruled that MESSI was too similar, visually, orally and conceptually, to “MASSI”, a pre-existing trade mark owned by a Spanish cycling goods company.

The Court held that, although MESSI and MASSI sound and look similar, conceptually they were very different. The Court thought that a significant amount of the ‘relevant public’ (consumers of sporting goods) would know who Lionel Messi was and make the link between MESSI and the famous footballer. Therefore, consumers would not confuse the use of MESSI with the continuing use of MASSI on sporting goods and the MESSI trademark could be registered.

Is HP distinctive?

In another decision, the Court held that Hewlett Packard (a well-known technology company) may trade mark the term “HP”, its initials. In doing so, the Court rejected an application for a declaration of invalidity from Poland-based IT Reseller Senetic.

Senetic argued that the HP was descriptive (which is fatal to a trade mark registration). The Court held that a mark will not be descriptive simply because it “consists of one or two letters.” In these circumstances the relevant public could understand HP as a reference to Hewlett and Packard, the names of the company’s founders.

Need a break?

Distinctive character is a hot topic at the moment. In a recent opinion, the Advocate General to the Court of Justice of the EU (an advisor to the EU’s top Court, whose decisions often guide the Court’s deliberations) said that Nestle ought not to be able to protect the shape of a four fingered Kit-Kat on the basis that they had failed to show that it has (through use) acquired distinctive character. This opinion is not binding, so we await the final ruling of the Court in this matter.

If you would like advice on registering a trade mark or managing your existing trade mark portfolio, please contact our intellectual property experts.  If you have already applied to register a trade mark and your application has been opposed, or you believe someone is infringing your intellectual property, please contact myself, Mike or Polly in our Litigation & Dispute Resolution Team.

Note: the content of this article is for general information only and does not constitute legal advice. Specific legal advice should be taken in any specific circumstance.

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