A Commentary of the CJEU Judgment in the Massi v Messi Trademark Cases

Commentary of the Joined Cases of EUIPO v. Lionel Andrés Messi Cuccittini & J.M.-E.V. e hijos SRL v. Lionel Andrés Messi Cuccittini, Cases C-449/18 P & 474/18 P of September 17, 2020

By Ferdinand Doh Galabe, Esq., BL, LLM, Intellectual Property Law expert

I – Introduction

On Thursday September 17, 2020, Europe’s top court, the Court of Justice of the European Union (CJEU) in Luxembourg dismissed two appeals brought by the European Union Intellectual Property Office (EUIPO), on the one hand, and a Spanish company J.M.-E.V. e hijos SRL, on the other hand, against the judgment of the EU General Court authorising the famous football star Lionel Messi to register the trademark “MESSI” for sports equipment and clothing.

According to European trademark regulations, when an EU Trademark (EUTM) is filed before the EUIPO, the latter examines the trademark and if the Office is satisfied that the trademark fulfils the conditions for registration, it publishes the trademark and interested parties have a period of three months following publication to file an opposition. Where no opposition is filed or where an opposition is filed but rejected by the EUIPO Opposition Division, the trademark proceeds to be registered by the EUIPO (the Office).

The decision of the EUIPO Opposition Division which is rendered after an examination of the merits of the opposition action in inter partes proceedings is, however, subject to appeal before the EUIPO Board of Appeal. The Board’s decision can in turn be appealed before the EU General Court (EUGC). The decisions of the EUGC may then be challenged on points of law only and set aside by the Court of Justice of the European Union (CJEU) which seats as a court of cassation to render final and unappealable judgments. This is exactly what happened in the two cases at hand.

II – Facts & Procedural History

On August 8, 2011, Argentina and FC Barcelona football star Lionel Andrés Messi Cuccittini filed EU trademark “MESSI” under Council Regulation (CE) no 207/2009 of February 26, 2009 (as modified and replaced by Regulation (EU2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark). Protection was sought in classes 9, 25, and 28 under the Nice Agreement on the International Classification of goods and services applied to the registration of trademarks. These classes concerned the following goods: emergency (rescue) apparatus and instruments (Class 9), clothing, footwear and headgear (Class 25), and gymnastic, sporting articles not included in other classes (Class 28).

This trademark application was duly examined by the EUIPO and published in the Community Trademarks Bulletin no 158/2011 of August 23, 2011 for opposition purposes.

Then on November 23, 2011, Mr. Jaime Masferrer Coma filed an opposition against the registration of the “MESSI” trademark before the EUIPO Division of Opposition, in pursuance of Article 41 of the Council Regulation (EC) no 207/2009 of February 26, 2009 on the Community Trademark, relating to filing a notice of opposition to the registration of a trademark on grounds that such a trademark may not be registered under Article 8 of the Council Regulation.

The opposition against trademark “MESSI” was brought by the opponent on the heels of earlier trademark registrations owned by Mr. Jaime Masferrer Coma until May 18, 2012, and transferred to the Spanish company J.M.-E.V. e hijos SRL, namely; trademark “MASSI” registration no 3436607, class 25, filed on October 31, 2003 and trademark “MASSI” registration no 414086, classes 9 & 28, filed on November 27, 1996. These classes concerned helmets for cyclists, protective clothing against accidents, personal protective equipment against accidents (Class 9), clothing, shoes and headgear for sports (Class 25), and bicycle gloves, shoulder, elbow and knee protectors (Class 28). As an aside, the term “MASSI” in Italian means “large rock”.

On June 12, 2013, the EUIPO Division of Opposition delivered a decision declaring the opposition action admissible and founded. It however examined the contention of applicant for registration, Lionel Messi, relating to the existence of sufficient use of trademark “MASSI” no 414086 and ruled per evidence adduced before it that such was the case only for “helmets for cyclists” which were goods listed in Class 9 only. In opposition proceedings under EU regulations, the applicant may challenge an opposition by arguing that there exists no conflict between the signs, and if the opposing (earlier) trademark has existed on the trademark register for at least five years prior to the publication date of the opposed mark, the applicant can request proof of use of the opposing trademark in relation to the relevant goods or services. Where the opponent fails to furnish such proof of use or fails to advance genuine grounds for non-use, his opposition action may be rejected partially or totally.

Dissatisfied with this decision, on August 9, 2013, Lionel Messi seized the Board of Appeal with an appeal action to set aside the unfavourable decision of the Division of Opposition. His appeal action relied on Articles 58 to 64 of the Council Regulations. On April 23, 2014, the Board of Appeal also rejected Messi’s appeal, finding the opposition against his trademark grounded in law, thus confirming the decision of the Division of Opposition.

While dismissing Lionel Messi’s appeal, the EUIPO Board of Appeal held that the objections raised by Lionel Messi relating to proof of use of the earlier registered trademark “MASSI” no 414086 were manifestly unfounded as it related to classes 9 (helmets for cyclists) and 28 (bicycle gloves). Secondly, the Board also held that the objections canvassed by Lionel Messi in relation to the lack of evidence of use of the opponent’s trademark registration no 414086 were manifestly unfounded. Thirdly, the Board of Appeal held that there was a risk of confusion between the conflicting trademarks because the goods of the conflicting marks in classes 9 and 28 were similar or even almost identical and that the conflicting trademarks were confusingly similar because their dominant components comprised of the terms “MASSI” and “MESSI” which were almost identical visually and phonetically and as such could not be conceptually different.

Aggrieved by the decision of the Board, on July 25, 2014 Lionel Messi filed an appeal against the Board’s decision before the EU General Court on the sole ground that by holding that there was a risk of confusion between the conflicting trademarks, the Board of Appeal had erred and violated Article 8 paragraph 1 (b) of the Council Regulation. The EU General Court agreed with Lionel Messi and delivered judgement on April 26, 2018, setting aside the decision of the Board in favour of Lionel Messi.

It is this judgment of the EU General Court (6th Chamber) which was contested in the proceedings before the CJEU by the appellants, the EUIPO and the Spanish company J.M.-E.V. e hijos SRL, who brought a cassation appeal before the CJEU, respectively on July 6, 2018 and July 17, 2018, seeking that the contested judgment of the EU General Court delivered on April 26, 2018 in Case T-554/14 Messi Cucciniti v. EUIPO – J.M.-E.V. e hijos, unreported, should be set aside.

The first appeal before the Court of Justice of the EU was enlisted as case C-449/18 P in which the EUIPO was appellant, Lionel Messi was plaintiff at first instance, and J.M.-E.V. e hijos SRL was intervener at first instance.

The second appeal brought before the EU Court of Justice was enlisted as case C-474/18 P in which J.M.-E.V. e hijos SRL was appellant and Lionel Messi was plaintiff at first instance and the EUIPO was defendant at first instance.

Both appeals were consolidated by a ruling of the CJEU dated October 8, 2018 and a single judgment was handed down by the CJEU on September 17, 2020, settling both disputes simultaneously by rejecting both appeals and ordering the appellants to bear the costs of the proceedings.

Before proceeding any further, it is apposite to underline that under European and international trademark law, a trademark is considered to be any sign capable of distinguishing the goods or services of an enterprise from those of other enterprises. Distinctive words, letters, slogans, numbers, drawings, pictures, shapes, colours, logotypes, labels or combinations, sounds, surnames, packaging, labels, wrappers, emblems, prints, stamps, vignettes, combinations or arrangements of colours, reliefs, devices, pseudonyms, seals, abbreviations, holograms, audio-visual signs, etc., used to distinguish an enterprise’s goods or services could be protected as trademarks.

It is trite law that the purpose of the distinctiveness of trademarks is primarily to protect consumers from being misled as to the origin, nature or characteristics of particular goods or services and to protect trademark owners from having their marks or marks resembling theirs unjustly exploited by, generally, dishonest enterprises. As such, under trademark law, a trademark may not be validly registered if it is identical or confusingly similar to another mark which belongs to another person and which relates to the same or similar goods or services or where it so resembles such a trademark that it is liable to mislead or confuse the public, or where it is liable to mislead the public as to origin, nature or characteristics. The key phrase in trademark infringement law is “risk of confusion” or “confusing similarity”, and various jurisdictions have applied and interpreted these concepts with slight nuances and variations peculiar to their laws and policies.

The specific provision of law which was applicable to the controversy between the parties was Article 8, paragraph 1 (b) of the Council Regulation (EC) no 207/2009 of February 26, 2009 on the Community Trademark. The EUIPO and the opponent (owner of trademarks “MASSI”) contended before the Opposition Division that the registration of trademark “MESSI” will violate the above-cited provisions of EU Regulation based on likelihood of confusion on the part of the public in which the earlier mark is protected as a result of the similar or almost identical nature of the signs and the existing confusing similarity between the conflicting marks.

In effect, Article 8, paragraph 1 (b) of the abovementioned Council Regulation on relative grounds for refusal, provides that, “upon opposition by the proprietor of an earlier trademark, the trademark applied for shall not be registered if because of its identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered by the trademarks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected; the likelihood of confusion includes the likelihood of association with the earlier trademark.

The Opposition Division and the Board of Appeal had held that it was the case that the application for the registration of trademark “MESSI” violated the above provisions. However, when the matter was appealed before the EU General Court, the latter held, inter alia, that, “as regards the similarity of signs, as is evident from the body of case law, the global assessment of the likelihood of confusion must, in relation to the visual, phonetic or conceptual similarity of conflicting signs, be based on the overall impression produced by them, bearing in mind, in particular, their distinctive and dominant components.

The EU General Court equally added that, “concerning conceptual comparison, on the other hand, it is evident from the foregoing that the Board of Appeal erred in considering that a conceptual differentiation was impossible, where appropriate, by the relevant public. On the contrary, a significant part of the relevant public will associate the term “MESSI” with the name of the famous footballer and will therefore perceive the conflicting term “MASSI” as being conceptually different”.

The EU General Court further indicated that, “according to case law, such conceptual differences can neutralize, in certain circumstances, the visual and phonetic similarities between conflicting signs. Such a neutralisation requires that at least one of the signs involved has, from the perspective of the relevant public, a clear and determined meaning, such that this relevant public is likely to grasp it at once.

The reasoning of the EU General Court dug deeper than those of the Opposition Division and the Board of Appeal in that they did not limit themselves to the findings that there was a visual and phonetic similarity between the conflicting marks which traded goods in the same classes per the Nice Classification and as such any conceptual differentiation between them was impossible.

The EU General Court went beyond these mere platitudes and reasoned, from the authority of case law and logic, that conceptual differences can exist between conflicting trademarks which are visually and phonetically similar and that if such conceptual differences are capable of neutralising or counteracting the visual and phonetic similarities between conflicting marks, because the public attributes a clear and determined meaning to such a sign such that the public easily recognises it as such, then the Court could not arrive at the conclusion that there was a risk of confusion between the marks. In such a case the Court was obliged to uphold the registration of the later mark on grounds of the “counteraction” theory.

It is with this reasoning of the EU General Court that the appellants joined issues before the CJEU which delivered its decision on September 17, 2020 confirming the judgment of the EU General Court thereby rejecting both appeals and ordering the costs of proceedings to be borne by the losing parties.

III – Issues Identified by the CJEU in the EU General Court Judgment

The First Appeal

In the first appeal case C-449/18 P, the question which was presented to the CJEU by the EUIPO in its lone ground of appeal related to the EU General Court’s alleged misconstruction of Article 8 paragraph 1(b) of the Council Regulations. The EUIPO argued that this was so because the EU General Court based its decision only on the perception of a significant part of the relevant public in order to rule out the existence of a likelihood of confusion, within the meaning of that provision, instead of basing the likelihood of confusion on a non-negligible part of the totality of the relevant public.

The EUIPO therefore argued that an opposition action brought under Article 8 paragraph 1(b) of the Council Regulations may be rejected only where the court establishes the non-existence of risk of confusion for the entire relevant public, that is, after finding that such a risk of confusion is likely to concern only a negligible part of the relevant public. As we shall see, this argument clearly makes nonsense of the classic criteria of the average consumer who is reasonably well informed and reasonably observant and circumspect and was a clear attempt to erect in its place another criterion of appreciation of risk of confusion.

It is apposite to state in passing, that, EU law as well as laws in different jurisdictions permit adjudicating authorities in analysing likelihood of confusion who are appraising the overall likelihood of confusion between signs, to recourse to the average consumer who is supposed to be representative of the collective minds of the relevant public. The theoretical foundation of this representative person known as the average consumer is present in all jurisdictions albeit with nuances from one jurisdiction to another. Under EU law, for example, this person is referred to as the average consumer who is reasonably well informed and reasonably observant and circumspect as defined and identified by the CJEU in Case C-342/97 Lloyd Schufbrik & Co. Gmbh v. Lkijsen Handel BV (1999) F.S.R. 627.

Although the application of this doctrine is considered as a matter of law in order to achieve procedural consistency and efficiency, adjudicating authorities allow extraneous factual support, in particular cases, to canvass the perception of the relevant public. This is possible, for example, through consumer or opinion surveys of the relevant public used to gather data on the beliefs and attitudes of consumers towards products, concepts or names.

In the present case before the CJEU, it was established that it was precisely because of the fame of the footballer and his status as a public figure, which were common knowledge, that they did not need to be specifically proved before the court which simply had to take judicial notice of same. The inverse of this reasoning is that had the fame of the footballer and his status as a public figure not been considered as common knowledge, the onus would have been on the party relying on same to adduce evidence of same before the court.

That said, according to the EUIPO’S arguments, it does not follow from the fact of the significance of a part of the relevant public taken into consideration that the remainder of that relevant public constitutes a negligible part as that remainder part of the relevant public could well equally represent a significant part of that relevant public.

On the conceptual comparison of the conflicting marks, the EUIPO equally attacked the decision of the EU General Court on the ground that the Court had failed to examine whether a significant part of the relevant public was not likely to associate the term “MESSI” with the name of the famous footballer, Lionel Messi.

The EUIPO thus argued that in the global appreciation or assessment of the risk of confusion as per Article 8 paragraph 1(b) of the Council Regulations, the EU General Court erroneously indicated in its judgment that the Board of Appeal had erred by considering that a possible analysis of the conceptual differentiation of the conflicting trademarks was impossible except for a part of the relevant public and that it was appropriate to reckon only a significant part of the relevant public which was likely to associate the term “MESSI” to the name of the football star, thus perceiving the term “MASSI” as conceptually different.

Further, according to the EUIPO, the error of the Court which constituted a violation of Article 8 was precisely that it considered that the perception of the conflicting trademarks by a significant part of the relevant public is sufficient to determine the perception of the conflicting marks by the relevant public as a whole, and thus was the sole perception to be taken into consideration to appreciate the existence of risk of confusion. This approach by the Court of assessing the risk of confusion was, according to the EUIPO, contrary to the provisions of Article 8 of the Council Regulations because it overlooked the perception of the other part of the relevant public, which although possibly less important, could constitute a significant part of that same relevant public.

In answer to this lone ground raised by the EUIPO, the CJEU noted that this ground was based on a misinterpretation of the judgment of the EU General Court. The CJEU observed from its reading of that same judgment of the General Court that concerning its analysis of the conceptual similarity of the marks, the EU General Court had clearly stated that notwithstanding the fact that some consumers might have never heard of the famous footballer or hardly remembered him, this is clearly not the case with the average consumer who is reasonably well informed and reasonably observant and circumspect who purchases sports articles and clothing. The EU General Court therefore judged that only a negligible part of the relevant public will fail to directly associate the term “MESSI” to the name of the famed football star.

In relation to the EUIPO’s arguments relating to the global appreciation of the risk of confusion with respect to the possibility of the conceptual differences neutralising or counteracting the visual and phonetic similarities between the marks, the CJEU opined that the EU General Court had reiterated the consideration according to which the repute of the famed footballer Messi was such that it was not plausible, in the absence of clear contrary clues, for the average consumer who had before his eyes the mark “MESSI” designating sportswear, to ignore that such a sign was referring to the famed football star, and to perceive it merely as a mark among many other marks under which such products were sold.

The CJEU therefore concluded that it was on the heels of the perception of the conflicting marks by the entire relevant public that the EU General Court rightly held that the Board of Appeal erred by holding that there was a risk of confusion between the trademarks. The CJEU accordingly dismissed this ground as unfounded.

The Second Appeal

Four grounds of appeal were advanced by the Spanish company J.M.-E.V. e hijos SRL in the second matter C-474/18 P, which was consolidated with the above first matter C-449/18 P. These were the following grounds: firstly, that the EU General Court allegedly misinterpreted Article 8 paragraph 1(b) of the Council Regulations by holding that in assessing risk of confusion, regard had to be given to the notoriety of Lionel Messi.

The second ground of appeal was an allegation that the EU General Court had erred in law by considering that the degree of notoriety in Europe of the surname “Messi” was a well-known fact of which the Board of Appeals should have taken judicial notice even without any proof adduced to that effect, because this is a fact susceptible to be known by anyone or be known through sources accessible to everyone.

The third ground of appeal was an allegation that the EU General Court erred in law by relying on facts and elements of proof adduced for the first time before the EU General Court, specifically, facts relating to the status of Lionel Messi as a public figure and the most reputed footballer.

The fourth ground of appeal was an allegation that the EU General Court wrongly applied a precedent or case law (Ruiz-Picasso v Office for the Harmonisation of the Internal Market, 12 January 2006, C-361/04 P, EU:C:2006:25) by allegedly affirming per the authority of that precedent that in certain cases conceptual differences can neutralise (or counteract) visual and phonetic similarities between conflicting marks. This is the “counteraction theory”.

On the first ground of appeal relating to the misinterpretation of Article 8 paragraph 1(b) of the Council Regulation concerning the appreciation of risk of confusion in consideration of the notoriety of the famous footballer, the EU Court of Justice answered by evoking an EU Court of Justice precedent, Judgment of March 4, 2020, EUIPO v Equivalenza Manufactory, C-328-18 P, EU:C:2020:156, which strongly supported the position that risk of confusion in the minds of the public should be appraised globally, taking into consideration all pertinent facts of the case at hand.

The EU Court of Justice equally cited another precedent, Judgment of February 28, 2019, Groupe Lea Nature v EUIPO, C-505/17 P, unreported, EU:C:2019:157, which supports the position that the global assessement of risk of confusion must, as far as visual, phonetic and conceptual similarities of the conflicting marks are concerned, be based on the overall impression that one has from the marks, regard being had, especially, to their distinctive and dominant components. The fact that the earlier registered mark is well known constitutes a pertinent factor in the appreciation of risk of confusion as affirmed in the afore-cited Judgment of Equivalenza Manufactory.

That notwithstanding, the EU Court of Justice supported the position of the EU General Court which held that the court should also take into consideration the notoriety of the applicant who has requested the registration of his surname as a mark, where it is obvious that such notoriety can have an influence on the relevant public’s perception of the trademark. In support of this position, the CJEU cited the Judgment of June 24, 2010, Becker v. Harman International Industries, C-51/09 P, EU:C:2010:368.

The CJEU therefore held that the EU General Court properly interpreted and applied the provisions of Article 8 of the Council Regulation, in light of case law, when it held that the notoriety of Lionel Messi constituted a pertinent factor in establishing the conceptual difference between the term “MESSI” and the term “MASSI”. The CJEU accordingly dismissed this ground as unfounded.

The CJEU then proceeded to address the second ground relating to the fact that the appellant alleged that the EU General Court had erred in law by considering that the degree of notoriety in Europe of the surname “Messi” was a well-known fact which the Board of Appeals should have taken judicial notice of even without any proof adduced to that effect, because it is a fact susceptible to be known by anyone or be known through sources accessible to everyone.

In response to this ground, the CJEU cited the provisions of Article 256 paragraph 1 (2) of the Treaty on the Functioning of the European Union and Article 58 (1) of the Statute of the Court of Justice of the European Union which limit the grounds of appeal admissible before the CJEU to questions of law, thus leaving questions of fact and evidence in the province of the lower court, except in cases where the lower court misconstrued the facts and evidence before it, which was not the ground upon which the appellant relied in the instant case. Questions of fact fell in the province of the trier of fact and only questions of law were amenable before the CJEU, and in the instant case the ground touched on a question of fact, not law. The CJEU, therefore, held that the appellant was trying to slip in a question of fact before it under the guise of a question of law and accordingly dismissed it as such.

The appreciation of facts by the EU General Court according to which the latter had found within its discretion that the surname “MESSI” was world renowned, on the one hand, as well as that the famed footballer was a public figure were all well known facts, on the other hand, and were not questions that could be settled before the CJEU as they were questions of fact, not law. The CJEU therefore held that there existed no legal requirement to prove with exactitude a well-known fact and that a court which takes judicial notice of such a well-known fact does not constitute a question of law, but of fact, as it was held in the Ruling of June 3, 2015, The Sunrider Corporation v OHIM, C-142/14 P, unreported, EU:C:2015:371. This question was therefore not subject to review on appeal before the CJEU.

The third ground of appeal that the CJEU was faced with was similar to the second in that the appellant alleged that the EU General Court erred in law by relying on facts and elements of proof adduced for the first time before the EU General Court as well as on fresh legal grounds which were never evoked before the Board of Appeal, thus materially changing the object of the proceedings.

In answer to this ground, the CJEU noted that from its reading of the lower court’s decision, the question of the notoriety of Lionel Messi within the framework of the comparison of the conceptual difference of the conflicting trademarks was part of the object of the proceedings before the Board of Appeal. The CJEU, however, recognized that the record of proceedings transmitted from the EU General Court showed that it was during the proceedings before it that Lionel Messi relied on the fact that he was a public figure whose notoriety goes beyond the sports world and that he was arguably the most popular footballer on the planet at the time, as evidenced by his numerous sports awards and titles.

That notwithstanding, the CJEU held that arguments raised for the first time on appeal before the EU General Court which are merely statements made concerning well-known facts, may not be considered as fresh facts as supported by Judgment of November 10, 2011, LG Electronics v OHIM, C-88/11 P, since these facts were accessible to the Board at the time the matter was before it and as such the Board should have taken account of these facts in appreciating the conceptual similarity between the conflicting marks. The CJEU accordingly dismissed this ground as well.

The fourth and final ground that the CJEU had to deal with was the appellant’s allegation that the EU General Court wrongly applied a precedent or case law (Ruiz-Picasso v Office for the Harmonisation of the Internal Market, 12 January 2006, C-361/04 P, EU:C:2006:25). The EUIPO asserted that the application to the present matter of this precedent was inappropriate and the EU GC could not rely on the ratio decidendi in the authority of the Ruiz-Picasso precedent according to which in certain cases conceptual differences can neutralise (or counteract) visual and phonetic similarities between conflicting marks. The EUIPO had argued that there were significant differences between that case and the case before the EU General Court which made the analogy drawn by the EU General Court between them misplaced.

Concerning this ground, the CJEU affirmed that a flurry of case law asserts the position that the global assessment of the likelihood of confusion implies that the conceptual differences between two signs may neutralize or counteract visual and phonetic similarities between them, provided that at least one of those signs has, from the perspective of the relevant public, a clear and determined meaning, in such a manner that this relevant public is likely to grasp it directly (see Ruiz-Picasso v Office for the Harmonisation of the Internal Market, 12 January 2006, C-361/04 P, EU:C:2006:25, see also Mülhens v OHIM, March 23, 2006, C-206/04 P, EU:C:2006:194, see also T.I.M.E. ART v OHIM, March 15, 2007, C-171/06 P, EU:C:207:171, unreported, see also Les Editions Albert Rene v OHIM, December 18, 2008, C-16/06 P, EU:C:2008:739, and finally see Pera Grave v OHIM, C-249/14 P, July 9, 2015, EU:C:2015:459, unreported).

The CJEU therefore vindicated the EU General Court on the heels of the fact that it had held that the relevant public perceived the signs in question as being conceptually different, and thus rightly applied the Ruiz-Picasso precedent to the instant case given that the possibility of applying this precedent depends on the assessment of the conceptual differences between the signs concerned according to their perception by the relevant public which is specific to them.

The CJEU finally noted that consideration relating to the fame of the “MESSI” name, on the one hand, as well as the possibility for the conceptual differences between the signs concerned to neutralize the visual and phonetic similarities that exist between them, on the other hand, are appreciations of a factual nature which do not fall within the competence of the CJEU within the framework of an appeal. The CJEU according dismissed this last ground as well and rejected both appeals in their entirety.

IV – How the CJEU Approached the Decision of the EU General Court

There were two main rules that the CJEU was called to apply in this matter. From a thorough analysis of the judgment, there is every reason to believe that these rules were properly applied by the CJEU.

The principal issue that was presented to the CJEU touched on whether in the course of appreciating risk of confusion, the EU General Court had violated Article 8 paragraph 1 (b) of Council Regulation (EC) no 207/2009 of February 26, 2009, on relative grounds for refusal by concluding that in certain cases conceptual differences between conflicting signs could neutralise (or counteract) visual and phonetic similarities between them.

The EU General Court had relied on the notoriety of Lionel Messi and on the fact that he was a public figure to demarcate this conceptual difference which, in its opinion, as a matter of fact, neutralised the visual and phonetic similarities between both signs, such that in the opinion of the Court, it was not likely for the average consumer to confuse both signs.

The second less critical applicable rule was to be found in Article 65 of Council Regulation (EC) no 207/2009 of February 26, 2009, on appeal actions brought before the Court of Justice, which provides that, “actions may be brought before the Court of Justice against decisions of the Boards of Appeal on appeals. The actions may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power. The Court of Justice has jurisdiction to annul or to alter the contested decision. The action shall be open to any party to the proceedings before the Board of Appeal adversely affected by its decision. The action shall be brought before the Court of Justice within two months of the date of notification of the decision of the Board of Appeal. The Office shall be required to take necessary measures to comply with the judgment of the Court of Justice.

The CJEU dismissed the third ground of the appellant for offending the above provisions, especially in relation to the statutory requirement that grounds of appeal be circumscribed to the grounds of law indicated in Article 65 of the Council Regulation being: incompetence, infringement of an essential procedural requirement, infringement of the Treaty, infringement of the Council Regulation or infringement of any rule of law relating to the application of these and finally misuse of power by the EU General Court.

In the first appeal case C-449/18 P, in which the EUIPO was appellant, the latter relied on one ground of law by alleging that the EU General Court had infringed the provisions of Article 8 paragraph 1 (b) of the Council Regulation by excluding the existence of any risk of confusion per the above provision on the ground that a significant part of the relevant public could conceptually differentiate the opposing marks, without going further to appreciate whether the other part of the relevant public was a significant part of the relevant public as well, and if so, then to appreciate the likelihood of confusion as regards this other possibly significant part of the relevant public. The EUIPO argued that because the EU General Court failed to consider this, it had infringed the provisions of Article 8 paragraph 1 (b) of the Council Regulation.

The CJEU held that this view was a clear distortion of the position of the EU General Court as clearly articulated in its judgment, which had held concerning the part of the relevant public alluded by the appellant, that it comprised either of only a negligible part of consumers who had either never heard of Messi or did not remember who he was, and that this was not the case with the average EU consumer who is reasonably well informed and reasonably observant and circumspect – see Case C-342/97 Lloyd Schufbrik & Co. Gmbh v. Lkijsen Handel BV (1999) F.S.R. 627). It was with the perception of this average EU consumer that the EU General Court was preoccupied, and rightly so.

Still, under this ground of the infringement of Article 8 paragraph 1 (b) of the Council Regulation, the EUIPO had argued that the EU General Court erroneously held that in assessing risk of confusion, conceptual differentiation based on the fame of the footballer could, in certain circumstances, neutralise (or counteract) visual and phonetic similarities between signs.

The CJEU, however, held that the EU General Court had rightly concluded that the reputation of the famed footballer Messi was such that it was unlikely, in the absence of concrete clues to the contrary, for the average consumer who had before his eyes the mark “MESSI” designating sportswear, to ignore that such a sign was referring to the famed football star, and to perceive it merely as a mark among many other marks under which such products were sold. The CJEU according supported the EU General Court’s conclusion that the Board had erred in considering that there was a risk of confusion in the circumstances. By so doing, the CJEU dismissed the first appeal lodged by the EUIPO.

Concerning the second appeal, the four grounds evoked by Spanish company J.M.-E.V. e hijos SRL in the second case C-474/18 P, were basically that, firstly, the EU General Court misinterpreted Article 8 paragraph 1(b) of the Council Regulations by holding that in appreciating risk of confusion, regard had to be given to the notoriety of Lionel Messi. The second ground of appeal was an allegation that the EU General Court had erred in law by considering that the degree of notoriety in Europe of the surname “Messi” was a well-known fact of which the Board of Appeals should have taken judicial notice even without any proof adduced to that effect, because it is a fact susceptible to be known by anyone or be known through sources accessible to everyone. The third ground of appeal was an allegation that the EU General Court erred in law by relying on facts and elements of proof adduced for the first time before the EU General Court. The fourth ground of appeal was an allegation that the EU General Court wrongly applied a precedent or case law (Ruiz-Picasso v. Office for the Harmonisation of the Internal Market, 12 January 2006, C-361/04 P, EU:C:2006:25) by allegedly affirming per the authority of that precedent that in certain cases conceptual differences can neutralise visual and phonetic similarities between conflicting marks.

While these grounds, except ground 3, relied on Article 65 of Council Regulation (EC) no 207/2009 of February 26, 2009, on appeal actions brought before the Court of Justice, the CJEU found them unfounded and accordingly dismissed them for reasons already explained above, especially, that the global assessment of risk of confusion must, as far as visual, phonetic and conceptual similarities of the conflicting marks are concerned, be based on the overall impression that one has from the marks, regard being had, especially, to their distinctive and dominant components. Another reason which formed the basis of the decision of the CJEU was the fact that consideration always has to be given to the notoriety of applicants who desire to trademark their surname, where it is obvious that such notoriety can have an influence on the relevant public’s perception of the trademark.

The CJEU also had the opportunity, on the heels of the provisions of Article 256 paragraph 1 (2) of the Treaty on the Functioning of the European Union and Article 58 (1) of the Statute of the Court of Justice of the European Union, to affirm the position that grounds of appeal which are subject to review before the Court are strictly on points of law, not fact. In the instant case it determined that the world renowned character of the surname “MESSI” as well as the status of the famed footballer as a public figure were all well known facts which were properly presumed to have been established before the lower Court (the trier of fact), and these facts should have been taken them into consideration, these being elements which were either widely known or accessible to the public. The CJEU according denied considering this ground as touching on points of fact and not law. The CJEU also rightly held that statements made for the first time on appeal concerning well-known facts were admissible because they were facts that the trier of fact ought to have known and taken into consideration, in the first place because they were either widely known or accessible to the public.

V – The Legal Aftermath

In conclusion, the single most important rationale upon which the court relied to determine the dispute before it was, in the opinion of the commentator, the ratio decidendi in Ruiz-Picasso v. Office for the Harmonisation of the Internal Market, 12 January 2006, C-361/04 P, EU:C:2006:25 and other cases, according to which in appreciating risk of confusion, conceptual differentiation, in certain circumstances, would neutralise (or counteract) visual and phonetic similarities between signs. For such a neutralisation to take place, it was required that at least one of the signs has, in the perception of the relevant public, a clear and determined meaning, such that the relevant public is susceptible to notice or grasp it at once or immediately.

In the present case, it was the reputation or fame of the footballer Messi that made the difference and persuaded the CJEU that it was not possible for the average consumer who is reasonably well informed and reasonably observant and circumspect who has before his eyes the mark “MESSI” designating sports articles and clothing, to ignore that such a sign was referring to the famed football star, and to perceive it merely as a mark among many other marks under which such products were sold.

The CJEU therefore held that the EU General Court did not infringe the provisions of Article 8 paragraph 1 (b) of the Council Regulation, and that the conceptual differentiation between the signs, which hinges on the notoriety of the football star Messi, excluded any risk of confusion between the sign sought to be registered by the footballer, which was his well-known surname, and the earlier right of the appellant, “MASSI” which was an Italian word which means “large rock”.

In view of precedent mentioned above, this decision does not add anything new, although it reminds us of the complexity of the concept of risk of confusion by affirming a long held principle that conceptual differentiation could, in certain circumstances, neutralise (or counteract) visual and phonetic similarities between contending signs, thus excluding likelihood of confusion in the mind of the average consumer who is reasonably well informed and reasonably observant and circumspect who has before his eyes both signs. The distinctive factor in this case was the fact that the most popular footballer in the world was involved. It is not clear, from this judgment, whether other less famous footballers, or sportsmen and sportswomen, for that matter may benefit of the same status as that which was ascribed to Lionel Messi.

The EU General Court as well as the CJEU were both astute and perspicacious to have not fallen into the error of the Opposition Division and the Board which opined that by reason of the visual and phonetic similarities between the signs in question and their almost identical nature, a conceptual differentiation was not possible, except by a part of the relevant public. Fortunately, the assertions, both of the Opposition Division and the Board do not represent the position of the law, which explains why the EU General Court and the CJEU, which preferred an approach of a global assessment of risk of confusion, objected to such a position and highlighted the important criteria of conceptual differentiation which in certain circumstances can neutralise (or counteract) and thus relegate visual and phonetic similarities to the background, provided that at least one of the signs has, in the perception of the relevant public, a clear and determined meaning, such that the relevant public is susceptible to notice or grasp it at once.

In this respect, the CJEU followed the ratio decidendi of a long line of cases including Ruiz-Picasso v. Office for the Harmonisation of the Internal Market (January 12, 2006), Mülhens v. OHIM (March 23, 2006), and Les Éditions Albert René v. OHIM (December 18, 2008). In the Mülhens case, for example, the court affirmed that, “according to its case law, the phonetic similarities may be counteracted by the conceptual differences between the trademarks in question. For there to be such a counteraction, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately ([Case T-292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335], paragraph 54).

It was equally held in Mülhens v. OHIM that the assertion that visual and conceptual differences between the signs at issue counteract their phonetic similarity, constitutes a finding of fact which is outside the jurisdiction of the Court of Justice to review on appeal, since it is clear from Article 225 EC and Article 58 of the Statute of the Court of Justice that an appeal lies on points of law only.

The court of original jurisdiction thus has exclusive jurisdiction to find and appraise the relevant facts and assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts and evidence are distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal. In this case, since the appellant did not rely on any distortion of the facts or evidence submitted to the EU General Court, the ground of appeal on this issue was rejected as inadmissible.

Likewise, in Les Éditions Albert René v. OHIM (December 18, 2008),  the court concluded that, “since the word sign in question had from the point of view of the relevant public a clear and specific meaning so that the public was capable of grasping it immediately, the conceptual differences separating the signs at issue were such as to counteract the aural similarities and any visual similarities.”

In this case, the court added that, “case law shows that the global assessment of the likelihood of confusion implies that conceptual differences between two signs may counteract aural and visual similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (see, to that effect, Case C-361/04 P Ruiz-Picasso & others v. OHIM [2006] ECR 1-643, paragraph 20, and Case C-206/04 P Mühlens v. OHIM [2006] ECR I-2717, paragraph 35 et seq.).”

Therefore, the position of the CJEU in the MASSI v MESSI case is consistent with a long line of cases determined by the Court of Justice, and the decision is altogether sound and good for justice and for the sports industry.

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