It's been an eventful summer, Lionel·Messi (Lionel Messi) Seems to be finally out of the news. 2020 years 9 month 17 day, European Court of Justice (Court of Justice of the European Union) Published regulation C-449/18 Number and control C-474/18 adjudication, To the EU Intellectual Property Office and J. M. - E. V. ehijos, S. R. L. General court (General Court) An appeal of a decision makes a final decision, And put Messi in the media spotlight again.

　　A brief summary of our previous comments on the case ( " [Eu trademark] When Massey meets Massey" ) , 2011 Lionel of Barcelona·Massey applied to the EU Intellectual Property Office for registration of the EU graphic trademark (Registration number: 010181154, As shown in the picture below) , Designated control 9 class, The first 25 Class sum control 28 Class goods.

　　Has two EU registered word trademarks "MASSI" (Registration number: 3436607 (Designated control 25 class) , Registration number: 414086 (Designated control 9 Class sum control 28 class) ) The right holder of, File an objection to the application, He believes that there is confusion and confusion between the disputed trademark and his own prior trademark/Or risk being mistaken for a link.

　　The EU Intellectual Property Office examined the issue and found that there was a risk of confusion between the contested marks, Adjudication in favour of mark "MASSI" All grounds of objection of the obligee, Dismiss the disputed trademark application. 2014 years, Messi launches appeal, But it was subsequently rejected by the EU Intellectual Property Office.

　　2014 years 9 month, Messi to the general court (General Court) appeal, Deemed trademark "MESSI" And trademark "MASSI" Can coexist, The importance of the concept of trademark was not fully considered in the review process of the EU Intellectual Property Office.

　　2018 years 4 month 28 day, The general courts hear appeals, The judgment granted registration of the disputed trademark. Eu Intellectual Property Office and J. M. - E. V. e hijos, S. R. L. All refused to accept the judgment, Separate appeal.

　　After the European Court of Justice, The decision was upheld in the common courts 2018 The conclusion of the judgment in 2005, The reasons are as follows:

　　1. In control C-449/18 P No (Eu Intellectual Property Office appeal) adjudication, The European Court of Justice stated that, The general court is analyzing trademarks "MESSI" And trademark "MASSI" If there is a possibility of confusion, Full consideration has been given to the perception of the two trademarks by all concerned members of the public, Not as the EU Intellectual Property Office argues in its appeal, Only partial public opinion was taken into account. The European Court of Justice held that, The appellant misinterpreted the decision of the general Court.

　　2. In control C-474/18 P No (J. M. -E. V. e hijos, S. R. L. Appeal case) adjudication, The European Court of Justice stated that, As well known as the previous trademark, When the disputing trademark applicant applies to register his or her name as a trademark, The applicant's own popularity may influence the public's impression of the disputed trademark, This needs to be taken into account when assessing the potential for confusion (2010 years 6 month 24 day, Becker/HarmanInternational Industries Case European Court of Justice No C-51/09 P adjudication, EU: C: 2010: 368, The first 37 Natural segment) . That is to say, The general court compares trademarks "MESSI" And trademark "MASSI" The concept of difference, It is right to look at Messi's personal popularity as a relevant factor.

　　3. similarly, This is the first time that the facts and evidence on which the Appellant believes that the Common Court has based its disputed judgment have been submitted to the Common Court, The European Court of Justice stated that, The issue of Messi's personal publicity has been disputed as part of the EU Intellectual Property Office's objection process.

　　In addition, The European Court of Justice has further affirmed the practice of the general Court: namely "MESSI" ——As a world famous footballer and public figure——Have a high reputation, It's familiar to almost everyone, Or you can learn about it from sources that are readily available. These resources were already in existence when the petition for objection was filed, The EU's Intellectual Property Office was supposed to be in the objection review, Analyze trademarks from a conceptual perspective "MESSI" And trademark "MASSI" Similarity of, And make a ruling based on the conclusion of the analysis, Take into account.

　　4. Finally, European court of justice, Appellant vs Ruiz Picasso and others/OHIM Case regulation C-361/04 P The verdict was misinterpreted. As stated in the petition for appeal, The European Court of Justice stated that, Under certain circumstances, Conceptual differences between contested trademarks can offset visual and phonetic similarities.

　　For that matter, The European Court of Justice reminds us, When making a comprehensive assessment of whether there is a risk of confusion, The conceptual differences between contested trademarks are sufficient to offset their visual and phonetic similarities: From the relevant public point of view, At least one of the two trademarks has a definite specificity, Meaning that can be immediately understood by the public. Because the relevant public can understand the disputed trademark ( "MESSI" and "MASSI" ) Are two symbols with different concepts, Therefore, Application of reference in this case Ruiz Picasso and others/OHIM case (The first C-361/04 P No) The verdict was correct.

　　The message of the European Court of Justice through this case——And that's what we agree with——Very definite: Even though the trademarks in question are visually and phonetically similar, If there is a clear conceptual difference, It is still possible to conclude that there is no risk of confusion or misidentification, In this case "Eu trade mark regulation" The first 8. 1 (b) Article will not apply.

　　Conceptual differences between the trademarks at issue in this case, Based on the name of the famous Argentine player among the relevant public. Existing prior registered trademark "MASSI" In the case of, Is it allowed to apply for trademark registration later, The fact that the trademark application itself is well-known should be taken into account. If Messi's name wasn't as well-known as it is, So obviously the trademark "MESSI" and "MASSI" There is no coexistence, aftermark ( "MESSI" ) The application should naturally be rejected.

　　Thus, The question I came up with is this, If the trademark is not applied for because of its nature, But through the actual use in the market to obtain the relevant public wide attention and recognition, Whether this conclusion of the European Court of Justice still applies? In other words, Whether the EU Intellectual Property Office considers the reputation of a trademark to be a factual basis for its fame, And in assessing whether there is a risk of confusion between the prior trademark and the applied trademark, As a factor that must be taken into account, the significant distinction obtained from applying for a trademark?

　　At this point, What attitude will the EU Intellectual Property Office take in the future, Remains to be seen.

　　 [reference] 　　 " [Eu trademark] When Massey meets Massey"

　　compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights