December 6, 2021

Volume XI, Number 340

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December 03, 2021

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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 (“CJEU”) has ruled that, after a decade-long legal battle, football ace Lionel Messi has the right to register his name as a trade mark.

This interesting case confirms that celebrity names are registrable as trade marks. However, whilst there are some advantages to seeking such protection, there are also some risks that need to be taken into account.

The MESSI decision

Background

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

Back in August 2011, Barcelona FC player Messi applied to the EUIPO to register his name, MESSI, as an EU trade mark in relation to sportswear. The application was opposed by a Spanish cycling company, which owned an earlier EU trade mark for the word MASSI, also registered for sportswear.

Initially, the EUIPO upheld the opposition, finding that there was likelihood of confusion between the trade mark MASSI and the word MESSI. The footballer had more success on appeal to the EU General Court, which said that Messi’s reputation counteracted the risk of any real confusion.

Dissatisfied, the EUIPO and the cycling company appealed to the CJEU. The CJEU has recently dismissed both appeals.

The CJEU’s decision

The CJEU held that:

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

Messi is therefore entitled to register his surname as a trade mark.

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

The commercial exploitation of ‘image rights’ (an individual’s rights in their own personality, such as their name, likeness, physical or style characteristics) generates significant sums for sports personalities, for example through the sale of merchandise, or engaging in endorsements and sponsorships.

However, UK intellectual property law does not recognise ‘image rights’ as a standalone right (the situation is different in several other key markets). Protection of those rights in the UK involves a combination of statutory and common law causes of action. Perhaps the most practical way to protect image rights is through the registered trade mark system. If a celebrity is able to register their name as a trade mark, they will have the exclusive right to exploit and profit from that asset and can prevent third parties from making unauthorised use of their registered trade mark. Messi follows a long list of other celebrities who have trade marked their name, such as David Beckham and the recently deceased, Sir Sean Connery.

Pitfalls to be aware of

However, there are some problems that may arise if a celebrity trade marks their name and then for example, assigns that trade mark to a company. The case of Elizabeth Emanuel can be used to illustrate this point.

Elizabeth Emanuel is the well-known designer of Princess Diana’s wedding dress. Ms Emanuel obtained a trade mark for the name ELIZABETH EMANUEL and, as is common (for example for tax efficiency reasons) assigned the trade mark to her company. Later down the line, the company passed into 3rd party hands and Ms Emanuel was no longer involved in the business. She tried to get the trade mark back on the basis that the use of it by a business in which she had no part would be misleading to the public.

After another long legal battle, Ms Emanuel was able to show that the mark was indeed misleading in 3rd party hands, but since she had freely assigned it, the CJEU ruled that her objection to the 3rd party use must fail. The court assumed that the deception of the pubic would fade over time (e.g. as they become aware that she no longer ran the business). In practical terms, this meant that Ms Emanuel lost the ability to exploit her own name as a brand.

Commentary

Although there are some drawbacks to be aware of, it is very common for well-known individuals such as football players to seek to register their name as a trade mark, to obtain exclusive rights in their brand. However, celebrity in itself is not a guarantee for success, any application for a trade mark must meet all the requirements for registration. This includes the requirement for distinctiveness, which can be tricky if the celebrity is not normally associated with the type of goods or services for which registration is sought.

© Copyright 2021 Squire Patton Boggs (US) LLPNational Law Review, Volume X, Number 308
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About this Author

Carlton Daniel Intellectual Property Attorney Squire Patton Boggs London, UK
Partner

Carlton Daniel advises on intellectual property rights, commercial contracts and consumer regulatory law. He handles both contentious and non-contentious matters.

Carlton has a particular focus on providing advice to clients in the advertising, marketing and media sectors, and also to businesses operating in the food and drink, retail, automotive and tech sectors.

Intellectual property rights: Carlton has significant experience advising on the exploitation and protection of trade marks, designs, copyright, databases, confidential information and patents. As...

44 20-7655-1026
Ailin O’Flaherty IP Attorney Squire Patton Boggs
Associate

Ailin O’Flaherty is an associate in the Intellectual Property & Technology Practice Group, based in London. Ailin’s experience covers both contentious and non-contentious commercial and intellectual property matters, as well as commercial contracts, licensing, confidentiality, data compliance and advertising.

Ailin previously worked in the in-house legal team of a global out-of-home advertising company and has undertaken several client secondments during her time at the Firm, including one at a leading technology communications company....

+44 207 655 1772
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