Messi Scores Aim in Commerce Mark Dispute: Registering Superstar Names as Commerce Marks

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Messi Scores Goal in Trade Mark Dispute: Registering Celebrity Names as Trade Marks

The Court of Justice of the European Union (“ECJ “) has ruled that soccer star Lionel Messi has the right to register his name as a trademark after decades of litigation.

This interesting case confirms that celebrities can be registered as trademarks. While there are some benefits to finding such protection, there are also some risks to be considered.

The Messi decision

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The full ECJ ruling is currently only available in Spanish and French, but there is an official summary available in English. We highlight the most interesting aspects as follows:

In August 2011, FC Barcelona player Messi applied to the EUIPO to register his name MESSI as an EU sportswear trademark. The application was rejected by a Spanish cycling company that owned a previous EU trademark for the word MASSI and was also registered for sportswear.

First, the EUIPO confirmed the opposition and found that there was a likelihood of confusion between the trade mark MASSI and the word MESSI. The footballer had more success on appeal to the EU court, which found Messi’s reputation to reduce the risk of real confusion.

The EUIPO and the bicycle company appealed to the ECJ unsatisfied. The ECJ recently rejected both appeals.

The decision of the ECJ

The ECJ found that:

  • Messi’s reputation can be taken into account when assessing the likelihood of confusion between the existing MASSI trademark and the MESSI trademark he has applied for.
  • It is clear that Messi is a very well known public figure. The public would therefore not confuse MASSI branded sportswear with Messi branded sportswear.

Messi is therefore entitled to register his last name as a trademark.

Why would a celebrity want to register their name as a trademark? UK perspective

The commercial exploitation of “image rights” (the rights of an individual to his own personality such as name, similarity, physical or stylistic features) generates considerable sums for sports personalities, for example through the sale of goods or through the inclusion of recommendations and sponsorship.

However, UK Intellectual Property Law does not recognize “image rights” as a separate right (the situation is different in several other key markets). The protection of these rights in the United Kingdom involves a combination of statutory and common law causes. Perhaps the most practical way to protect image rights is through the registered trademark system. If a celebrity can register their name as a trademark, they have the exclusive right to exploit and benefit from that asset and can prevent third parties from unauthorized use of their registered trademark. Messi follows a long list of other celebrities who have registered her name, including David Beckham and the recently deceased Sir Sean Connery.

Pitfalls to be aware of

However, there are some issues that can arise when a celebrity brand bears their name and then assigns that brand to a company, for example. The case of Elizabeth Emanuel can be used to illustrate this point.

Elizabeth Emanuel is the famous designer of Princess Diana’s wedding dress. Ms. Emanuel received a trademark for the name ELIZABETH EMANUEL and, as is customary (for reasons of tax efficiency, for example), transferred the trademark to her company. The company later passed into the hands of third parties and Ms. Emanuel was no longer involved in the business. She tried to win back the brand on the grounds that its use by a company she was not involved in would be misleading to the public.

After another long legal battle, Ms. Emanuel was able to prove that the trademark was indeed misleading in the hands of third parties. However, since she had freely awarded them, the ECJ ruled that her objection to the use by third parties must fail. The court assumed that the deception of shame would wear off over time (e.g. when they realized that she was no longer running the business). In practice, this meant that Ms. Emanuel lost the ability to use her own name as a brand.

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Although there are some drawbacks to be aware of, well-known people like soccer players often try to register their name as a trademark in order to get exclusive rights to their trademark. However, celebrities in themselves are not a guarantee of success. Every application for a trademark must meet all the requirements for registration. This includes the requirement of distinctiveness, which can be difficult when the celebrity is not normally associated with the type of goods or services for which registration is being sought.

If you have any questions on this matter, please contact Carlton Daniel and Ailin O’Flaherty.