The background.
In 2011, the international soccer ace Lionel Messi filed an application with the EUIPO for the registration of a device mark containing, in its denominative part, his surname MESSI, with reference to products of clothing, shoes and sport apparel. The application, once published, was subject to opposition by the owner of the earlier trademark “MASSI”, also registered with regard to clothing and sports footwear. The opponent invoked the existence of a risk of confusion between the signs, given their high phonetic and visual similarity and the identity of the goods. By decision of June 12, 2013, the EUIPO upheld the opposition and rejected the trademark MESSI. The decision was confirmed in the appeal promoted before the EUIPO’s Board of Appeal. The dispute was then brought before the General Court of the European Union, which with a decision of 26 April 2018 upheld the appeal of the Argentinian football player and annulled EUIPO’s decision on the ground that the reputation of the applicant neutralizes the visual and phonetic similarities between the signs and therefore excludes the likelihood of confusion.
Both EUIPO and the owner of the earlier mark filed an appeal before the Court of Justice of the European Union, contesting, among other, that the General Court wrongly took into consideration Messi’s reputation in order to affirm the presence of a likelihood of confusion; the ground of appeal was based on the EU settled case law which states that in order to assess the likelihood of confusion for the public of consumers, only the reputation of the earlier trademark should be assessed, and that in any case the assessment on reputation should concern the sign and not its owner.

The Court’s judgment.
With the decision in comment, the EUCJ endorsed the General Court’s judgment and excluded any likelihood of confusion between the opposing marks, thus confirming the registrability of the trademark MESSI.
Among the grounds of the judgment, it appears of particular interest the part in which the Judges of Luxembourg ruled on the main theme invoked by the appellants and therefore on the possible relevance, in the assessment on the likelihood of confusion, of the reputation of the later sign and its owner. On this point, the Court does not contest that – as argued by the appellants – the assessment of the reputation of the earlier mark is of fundamental importance for the determination of the likelihood of confusion, being it an essential factor. That said, the Court goes further: recalling a precedent in terms (Case C-328/18, judgment of 4 March 2020), the EUCJ explains that the assessment on the likelihood of confusion between trademarks is complex and must take into account a variety of equally relevant factors. Among these, the reputation of the earlier mark is certainly relevant. However, this does not exclude that it is appropriate and, in some cases, necessary to take into due consideration also the reputation of the person applying for the registration of his name as a trademark, if and to the extent that such reputation can actually influence the perception of the trademark by the public of consumers.
In the present case, the Court concludes, the reputation of the football player Messi in most of the EU territory is so strong (to the point of considering it as a “notorious” fact, i.e. a fact that can be known by anyone or of which one may become aware through generally accessible sources) that it is clearly able to distinguish the MESSI trademark from the earlier one from a conceptual point of view, thus excluding any risk of confusion.

Giorgio Rapaccini