Lionel Messi has, at last, joined the growing list of sporting celebrities (including Usain Bolt and rival, Cristiano Ronaldo) who have registered their name as a trade mark. More than 10 years after filing his trade mark application, ‘Lionel Messi’®, has been registered as an EU trade mark in classes 3, 9, 14, 16, 25 and 28 (covering a wide range of products including fragrances, jewellery, clothing and sports equipment).
The lengthy battle comes after Massi, the famous cycling brand in Spain, opposed the trade mark application alleging that ‘Messi’ and ‘Massi’ were very similar and were likely to give rise to consumer confusion. ‘Massi’® has been a registered EU trade mark since 1998.
However, after years of wrangling, the General Court of the European Union ruled at the end of last week that the level of fame enjoyed by five-time winner of the Ballon d’Or was sufficient to preclude any likelihood of confusion, notwithstanding any apparent similarities between the marks and overlap in products. The trade mark is now successfully registered under EU006353131. This new registration (perhaps Messi’s most valuable) forms part of a wider trade mark portfolio owned by the footballer that also includes his autograph and the logo:
Sports personalities who are (extremely) well known are unlikely to have their names confused with similar marks or concepts. Lionel Messi’s successful registration is yet further evidence of this and how beneficial it can be for sports stars to register their personal brands. Trade mark registrations are simple to enforce, license and commercialise, potentially on a global basis worldwide.
Sports stars can trade mark more than just their name or autograph. In 2013, Real Madrid footballer Gareth Bale successfully registered his signature goal celebration ‘the eleven of hearts’ as a UK trade mark. The figurative mark features the number eleven in the centre of a heart formed by thumbs and index fingers.
You can read a detailed overview of branding and image rights for international sportspeople in Gavin Stenton’s blog for the LawInSport website.
This article was co-authored by Jaya Bajaj, a trainee solicitor in Penningtons Manches' commercial, IP and IT team.