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01st October 2018

How famous do you have to be to register your own names as a trade mark?

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This summer Lionel Messi, one of the highest paid footballers in the world, won a seven year battle to trade mark his own name. Footballers can achieve global stardom. Thousands of fans greeted Cristiano Ronaldo on a recent visit to China, and it is reported that he produces nearly $1 billion in value for his sponsors. However, such recognition arising just from your own name does not necessarily mean the path is easy to register that as a trade mark.

In order to be registered as a European trade mark, a name must pass several tests, including the ‘likelihood of confusion’ test. Registration will be refused if the name is similar to an earlier trade mark registered for identical or similar goods or services and there is a likelihood of confusion with the earlier trade mark.

Messi’s original application to register his name as a graphic mark was challenged by cycling clothing manufacturer Massi, who argued that there was a likelihood of confusion between the two names. The EUIPO upheld the opposition and agreed that MASSI and MESSI were too similar, both phonetically and visually.

Messi continued the battle however and, this summer, the General Court agreed with him. Acknowledging Messi’s global fame, the Court found that Messi was a well known public figure not just in the football world, but generally. A significant part of the relevant public would associate the name Messi with the famous footballer, and would perceive the term ‘Massi’ as being conceptually different. The extent of Lionel Messi’s fame tipped the balance in his favour, despite the clear visual and phonetic similarities between the marks.

Messi’s range of sports clothing is yet to be released, but the mark is already being put to good use on his website.

The battle does not end when the mark is registered; to maintain its value, stars must turn their minds to enforcement. When Cristiano Ronaldo looked to enter the US market with his brand CR7, battle lines had to be drawn with a Rhode Island businessman, who had already registered the CR7 combination in the US.

Nevertheless, what Messi has shown us is that, if you really are that famous, your name will be recognised despite its similarity to others, and traditional factors such as visual and phonetic similarity may lose their importance in the trade mark registration process. Quite where the line will be drawn, and how famous you have to be to negate the risk of confusion, remains to be seen.

For more information, please contact Hannah Thorogood on 01223 532737 or click here to email Hannah.