My Name - My Mark??

Posted on September 30, 2020 in Intellectual Property , Commercial , Private Client (Tags:)

This month has seen the successful end to a ten-year battle by Argentinian football legend Lionel Messi for the use of his name as a trade mark in relation to sports clothing and equipment in Europe.  Messi first filed his application for an Europe-wide trade mark in 2011 but came up against opposition by the Spanish cycling brand MASSI which had an earlier registration of the word MASSI in the same classes of goods as those applied for by Messi.  Trade mark applications are capable of being opposed by any person who wishes to prevent their registration.  MASSI successfully opposed Messi’s trade mark at the EU Intellectual Property Office but the decision was subsequently overturned on appeal by Messi.  This was based on the Court’s view that there was no likelihood of confusion due to Messi’s considerable reputation, which outweighed the similarity of his trade mark to that of the cycling brand MASSI. 

After a further appeal the case ended up in the European Court of Justice which relied heavily on the reputation of Messi as one of the world’s best football players and found that reputation could influence the public’s perception of the trade mark.  What was particularly interesting was that the Court found that Messi’s reputation was a well-known fact that could be determined from generally accessible sources and was therefore relevant in assessing the public’s perception of the mark. 

Reputation is an important element in determining trade mark disputes in many jurisdictions and particularly in Europe, and it is unusual for it to be accepted as a fact without further evidence being provided of that reputation in the market-place.  In this case, given the celebrity status of Messi, the Court was prepared to determine reputation from generally accessible sources and even went as far as to say that Messi is not only known amongst football fans and sports followers but would also be known by a majority of people “who are informed and reasonably attentive” and “who read newspapers, watch television, go to the cinema or listen to the radio”.  It is also relevant that goods which the trade mark is associated with are sports clothes which the public was likely to know and associate with Messi.

Reputation of the trade mark is also relevant in New Zealand trade mark cases.  It is an essential component where a party owns a trade mark which has not been registered, and is considered in cases involving registered trade marks in determining the likelihood of confusion in the market.  It is also important where a trade mark is so well known that it could be used to prevent competitors from using a similar mark in relation to goods or services which bear no resemblance to those of the owner of the well-known mark.

This often leads to the “David and Goliath” trade mark stories in the media, where a large well funded business tries to prevent a smaller, often newer, business from using its chosen brand due to the strength of its reputation in a mark.  One famous example of this is the Blackball Hilton (now cheekily called “Formerly the Blackball Hilton”) after threatened action by the Hilton Hotel chain. 

What the Messi example does tell us is that even if you are a celebrity with a worldwide reputation, it can take years and a very large legal bill to get your name registered as a trade mark if it is similar to an earlier registered mark, so getting your application right to start with is crucial.

As long as you can claim there is no likelihood of confusion at the time you register your trade mark, registration of a trade mark will give you much better rights than relying on any reputation you might build up in your name.

Sally Peart, Partner