Messi vs. Massi
In 2011, Lionel Messi filed an application for the trademark "Messi" with an associated figurative mark with the European Union Intellectual Property Office (EUIPO) for the apparel and sports goods sector. The trademark has been registered accordingly.
The trademark owner of the earlier trademark "Massi" filed an opposition against the registration on the grounds that there was a likelihood of confusion.
Initially the EUIPO upheld the opposition in 2013 and Lionel Messi appealed against this decision to the EUIPO. In April 2014, the EUIPO rejected the appeal and maintained the original view that there was a likelihood of confusion between the signs "Massi" and "Messi". Lionel Messi then brought an action before the Court of First Instance of the European Union seeking annulment of the EUIPO decision. By judgment of 26 April 2018, the Court of First Instance annulled the decision, considering that the footballer's reputation neutralized the visual and phonetic similarities between the two signs and ruled out any likelihood of confusion.
The owners of the earlier mark "Massi" appealed against the judgment of the Court of First Instance.
The European Court of Justice (ECJ) dismissed the appeal and ruled (Judgement of 17.09.2020, Ref. C-449/18) that the professional footballer's trademark remains valid.
The ECJ stated that there is no likelihood of confusion between the trademarks "Messi" and "Massi" for sporting goods and sportswear.
The reputation of Lionel Messi neutralizes the similarity. The ECJ correctly stated that the reputation of the name Messi as the family name of a world-renowned soccer player and public figure is a generally known fact. Thus, the ECJ does not see any likelihood of confusion between the two trademarks.