Lionel Messi is a 10-time Spanish champion and claimed four UEFA Champions League titles with Barca in 2006, 2009, 2011, and 2015. Back in 2011, the footballer applied to register an EU-wide trademark for a logo consisting of his name and a stylized letter M, to be used in categories such as clothing and gym equipment. A Spanish cycling company called Massi was successful in challenging the application after a complaint was upheld in 2013. Massi claimed that the similarities between both brands would confuse customers.
Likelihood of confusion
The likelihood is one of the most common reasons cited for trademark opposition, as the company that registered a trademark first can bring a claim for infringement if it can prove that the similarity of the marks is likely to mislead the consumers. This means that a company can stop the potential infringer from registering the name or logo in question if a reasonable consumer would likely assume that the goods/services in question are from the same or connected brands.
A number of factors play into the likelihood of confusion, including how distinctive the name/logo is, how similar it is to the opposing trademark (in the case of a logo, whether the color, font, or style are too similar), and how similar the products or services are.
In June 2013, Messi lost in an initial decision before the EUIPO and appealed. The cycling company lost in a ruling at the EU's General Court in 2018. The EU high court stated that Messi's reputation is a relevant factor in distinguishing between the footballer's brand and the cycling company. The decision of the Court highlights the importance of reputation and well-known status in a mark as a factor when assessing the likelihood of deception or confusion arising with the mark of a third party. This decision has also granted Messi the right to use his name in connection to sports equipment and put him in the range of team-sport athletes famous enough to have a global brand.
Importance of personal brand
Messi has now a trademark portfolio of 136 marks, bigger than any other football player. Of those, a majority (80) are single class trademarks in his home country of Argentina, with 22 being in China, seven in Brazil, the EU, and Malaysia, six in the UK, three in Spain, and other single marks in Canada, Chile, and the US . The football star has also launched his own “Messi Store” with a variety of products under his trademarks. Messi’s trademark activity shows that he is well aware of the commercial power of his brand and uses it to his advantage. Based on the results of a survey conducted by Trama among 10,000 consumers, it is the brand that plays a key role in shaping consumer choice, accounting for 24% of the consumer decision-making process. Every well-known figure like Messi has the potential to turn their personal brand into a trademark, an asset that must be protected while continuously molding and shaping.