May 2018. At the end of April, the European General Court allowed world-class footballer Lionel Messi to register his European trademark to the logo Messi for clothing. The original application had been challenged by the owner of the Massi cycle and clothing brand. The Court however concluded that there was no risk of the trademark Messi being confused with the wordmark Massi.
Although the names Messi and Massi are very similar in appearance and in pronunciation, the Court ruled that there is no infringement. This is because Messi the footballer is world-famous. Consumers would therefore primarily associate the Messi brand with the celebrated star striker, making it sufficiently different to Massi. Messi’s global reputation therefore gets him through the legal loophole at a squeeze.
Picasso vs Picaro
The fact that fame can also have a downside in trademark law was demonstrated just over 10 years ago when the heirs of the legendary painter Pablo Picasso opposed an application by car-maker DaimlerChrysler to register the word Picaro as a European trademark. The painter’s heirs had already registered the name Picasso as a trademark for cars, and had licensed it to French car-maker Citroën. They now argued that the two car brands – Picasso and Picaro – were too similar.
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The outcome was a disappointment for the heirs and their licensee. The European Court of Justice concluded in 2006 that Picaro didn’t infringe their trademark rights to the name Picasso. Despite the close visual and phonetic similarities between the two trademarks, the worldwide fame of Pablo Picasso proved a disadvantage on this occasion: because consumers would inevitably see the name Picasso as a reference to the famous painter, this would create sufficient distance between the names Picasso and Picaro. Picaro was therefore given the go-ahead for registration. So fame can also work against you!