Latest EU trademark developments – levelling the playing field

MESSI

Lionel Andrés Messi Cuccittini filed a trademark application for the trademark MESSI in Classes 9, 25 and 28 (see Figure 1).

The Messi trademark was opposed by Jaime Masferrer Coma. Opposition was based on two prior word trademarks, including MASSI, registered in Classes 9, 25 and 28. The EU Intellectual Property Office (EUIPO) rejected the MESSI trademark (Lionel Andrés Messi Cuccittini v EUIPO (T 554/14)). EUIPO noticed that there was a likelihood of confusion between the MESSI and MASSI trademarks. The marks were extremely similar, as their dominant elements ‘messi’ and ‘massi’ are almost identical at a visual and phonetical level. As to the conceptual level, the EUIPO underlined that dissimilarity based on Messi’s fame would apply only in relation to part of the relevant public (ie, those that are interested in football and sport). The other part of the public, those who are not interested in sport and football, would not associate the word ‘messi’ with the football player and consumers would therefore perceive no conceptual dissimilarity.

On appeal, the applicant argued that there was no likelihood of confusion between the marks at issue. Messi complained that due to the globally known character of his name there was a difference on a conceptual level. He underlined that his reputation and fame go far beyond the sporting world. He is a public person known and recognised by the informed consumer, and so the name Messi is well known and recognised by consumers, excluding the risk of confusion. The applicant provided no evidence that the general public invariably and automatically associate the word ‘messi’ with the football player of the same name, or that the surname Messi is particularly unusual.

The General Court did not share the EUIPO’s findings on conceptual similarity. The court noticed that even though the applicant argued for the first time before the court and failed to produce any evidence to support his assertions, Lionel Messi is a public figure whose notoriety goes beyond the sporting field, and the EUIPO should have known this information when examining the case. The General Court underlined that the limitation of the factual basis of the examination made by the Board of Appeal does not preclude the board from taking into account, in addition to the facts explicitly put forward by the parties, well-known facts (ie, facts that are likely to be known by anyone or that may be known through generally accessible sources). The General Court admitted that the renown of the Messi name as the name of a world class football player and public persona is a well-known fact readily available via public sources. The General Court said that because of the applicant’s renowned name there will be conceptual differences between the MASSI and MESSI signs for a number of consumers. The difference regarding the conceptual level neutralises the visual and phonetic similarities between the signs. As such, there is no risk of confusion between the MESSI and MASSI trademarks.

The EUIPO brought an appeal submitting that taking into account only the perception of a significant part of the relevant public and failing to establish the relevance of the remainder of the relevant public, for whom the conceptual difference between the marks fails to counteract their visual or phonetic similarity, is not the right approach to examining the conceptual similarity and the General Court therefore erred in law. The case is pending.

NEYMAR

Carlos Moreira filed an application for the registration of the word mark NEYMAR in Class 25. Neymar Da Silva Santos Júnior filed an application for a declaration of invalidity based on a bad faith application. The NEYMAR trademark was cancelled (Carlos Moreira v EUIPO (T 795/17)).

On appeal the applicant claimed that he was not acting in bad faith when filing the application for registration of NEYMAR. When filing the application, he did not know that Neymar was a rising international football star. The applicant denied having intended to benefit illegally from the football player’s renown by seeking registration of NEYMAR.

The General Court noticed that the Board of Appeal relied on objective factors from a portfolio of evidence consisting of press and internet articles to determine that Neymar was a talented footballer who had already achieved a global standing in the world of football at the time of application. The fact that on the same day the applicant filed another football player’s name as a trademark shows that he has knowledge of football. The evidence and circumstances of the case prove that real purpose of the commercial logic behind the contested trademark filing was to take advantage of Neymar’s reputation making the intention dishonest. The General Court found that the applicant had acted in bad faith when he filed the application to register NEYMAR.

adidas

adidas AG filed a European trademark application in Class 25 for a figurative trademark (adidas AG v Shoe Branding Europe, BVBA T-307/17) (see Figure 2) and gave the following description: “the mark consists of three parallel equidistant stripes of identical width, applied on the product in any direction”.

The trademark was registered and Shoe Branding Europe BVBA filed an application for declaration of invalidity, stating that the contested trademark has no distinctive character. The Cancellation Division invalidated the adidas trademark. adidas appealed but the appeal was dismissed. The Board of Appeal stated that the contested trademark was inherently devoid of distinctive character and the applicant failed to prove that the contested trademark had acquired distinctive character through use throughout the European Union.

On appeal, adidas argued that as a result of misinterpretation of its trademark and misapplication of the law of permissible variations, the Board of Appeal had dismissed various evidence. The applicant held that adidas trademark has a surface pattern that may be reproduced in different dimensions and proportions depending on the goods on which it is applied. The General Court noticed that trademark was registered as figurative mark confirmed by the trademark description. Neither a graphic representation nor a description of the adidas mark proves that it is composed of a series of regularly repetitive elements. The General Court concluded therefore that the adidas trademark is an ordinary figurative mark.

adidas did not argue over the extremely simple character of its trademark, but raised the point that the Board of Appeal wrongly assessed that even a slight variation produces a significant alteration to its the characteristics as registered. The General Court held that the simpler the mark the more likely an alteration will affect one of its essential characteristics and the mark’s perception by the relevant public.

As to the inversion of the colour scheme, the General Court held that because of the extreme simplicity of the adidas trademark, the act of reversing the colour scheme, even if a sharp contrast between the three stripes and the background is preserved, cannot be described as an insignificant variation. The same refers to colour combination.

Regarding acquired distinctiveness, the General Court stated that it was not possible to establish a link between the figures provided by the applicant and the adidas trademark, as well as between those figures and the goods in question. The General Court said that the results of the five market surveys submitted could neither be extrapolated to all the member states, nor completed and supported in member states not covered by those surveys with other evidence produced by the applicant. The General Court discovered that the applicant did not prove use of the adidas trademark throughout the European Union. Further, the evidence provided was insufficient to demonstrate that, by virtue of that use, the contested trademark has come, in the whole of that territory, to identify the goods for which it was registered and thus to distinguish those goods from those of other undertakings. The General Court dismissed the appeal. adidas still has time to file an appeal.