MESSI V. MASSI: The Place Of Fame In Determining Trademark Matters; A Review From The Lens Of Nigerian Principles

By Prince I. Ubochi

INTRODUCTION

I concede to 3 things:

1. Messi is a famous football star
2. The court is human
3. Every case has a unique measuring scale for determining whether
   the particular Judex or Judices sitting over a matter will hold one
   way or another

I stumbled into a piece which unveiled that the General Court of
the European Union gave a judgement in favour of Messi over what
clearly was a long legal sojourn in search of a destination between
Lionel Andrés Messi Cuccittini (hereinafter referred to as Messi)
and the owner of another sports apparel brand: Mr Jaime Masferrer
Coma, for Massi (hereinafter referred to as Massi).

With the zeal of a fanatic, I read the facts of the case; they
read:

“In August 2011, the footballer Lionel Andrés Messi Cuccittini
requested the European Union Office for Intellectual Property
(EUIPO) to register the following EU trademark, inter alia for
sports and gymnastics clothing, footwear and equipment.

In November 2011, Mr Jaime Masferrer Coma filed a notice of
opposition to the registration of Mr Messi’s trade mark claiming a
likelihood of confusion with the ‘MASSI’ EU word marks registered,
inter alia, for clothing, shoes, bicycle helmets, protective
clothing and gloves (the rights to those marks were transferred in
May 2012 to the company JM-EV e hijos). In 2013 EUIPO upheld the
opposition. Mr Messi lodged an appeal before EUIPO against that
decision. In April 2014 EUIPO dismissed the appeal. In essence,
EUIPO concluded that there is a likelihood of confusion between the
marks. It took the view that the marks at issue are similar because
their dominant elements, consisting of the terms ‘MASSI’ and
‘MESSI’, are almost identical visually and phonetically and that a
possible conceptual differentiation will be made, where
appropriate, only by part of the relevant public.”

Unsatisfied with EUIPO’s decision, Messi brought an appeal
before the General Court to have that decision annulled.

The EU General Court held, that Messi being one of the most
famous athletes in the world could use his name and logo in the
European Union. Reasoning further, the court pointed out that the
football player’s fame counteracts the visual and phonetic
similarities between his trademark and the trademark ‘MASSI’
belonging to a Spanish company.

To lay a solid foundation, the concept of Trademark needs to be
understood.

What is Trademark?

By virtue of section 67 (1) of the Trademarks Act, Cap T12 Laws
of the Federation of Nigeria (LFN) 2004, a Trademark is defined
as:

“A mark used or proposed to be used in relation to goods for the
purpose of indicating or so as to indicate a connection in the
course of trade between the goods and some person having the right
either as proprietor or as a registered user to use the mark,
whether with or without any indication of identity of that
person.”

In continuation, the Trademark Act defines a mark in section 67
(1) as including “a device, brand, heading, label, ticket, name,
signature, word, letter, numeral, or any combination thereof.”

A trademark is simply any sign that individualizes the goods of
a given enterprise and distinguishes them from the goods of its
competitors. In order to individualize a product for the consumer,
the trademark must indicate its source; this is sufficient if it
can be seen that a consumer can trust a given enterprise. Very
importantly, a trademark should be able to distinguish goods of a
given enterprise from those of other enterprises; only if it allows
a consumer to distinguish a product sold under it from goods of
other enterprises offered in the market can the trademark fulfill
its functions.

On the meaning of distinctiveness, the court has held in FERODO
LIMITED & ANOR. V. IBETO INDUSTRIES LIMITED (2004)
LPELR-SC.95/1999, that: “An essential element of a device claimed
to be a trademark is that it identifies the goods of a particular
merchant and distinguishes them from the goods of others. A word,
symbol, shape or colour serving this purpose is said to be
distinctive. Certain marks are inherently distinctive while others
only acquire distinctiveness over time. A distinctive mark may lose
its distinctiveness overtime and become generic.”

The court further explained the place of distinctiveness in the
case supra, thus: “In the law of trademarks, the element of
distinctiveness comes before that of passing-off in the way the
number 1 comes before the number 2. In other words, the plaintiff
must first prove to the satisfaction of the court that the
trademark has a distinctive character or nature, before he can
prove the movement of the trademark of the defendant in business
circles by way of passing-off.”

Adding more flavour, the protection of trademark has a moral,
social and an economic basis. By virtue of Article 27 (2) of the
United Nations Universal Declaration of Human rights, the law is
that “everyone has the right to the protection of the moral and
material interest resulting from any scientific, literary or
artistic production of which he is the author.”

In fact, the necessity for the protection of a trademark cannot
be undermined, this is because it benefits the society in the
following vital ways:

1. a) Promoting competition among enterprises
2. b) Protecting the public from deceit, and
3. c) Guaranteeing product quality

On the strength of section 49 of the Trademarks Act, in all
legal proceedings, the fact that a person is registered as
proprietor of the trademark shall be prima facie evidence of the
validity of original trade. See VIRGIN ENTERPRISES LTD v. RICHDAY
BEVERAGES NIG. LTD (2009) LPELR-CA/L/550/05. Also, an acceptance
letter can serve as sufficient proof of the registration of a
trademark. See D & S TRADING CO. LTD v. REMIA C. V. & ANOR (2019)
LPELR-CA/L/925/2016.

Importantly, in determining what must be considered in deciding
whether two marks are confusingly similar, the principle laid in
the case of HOLDENT INTERNATIONAL LTD v. PETERSVILIE NIGERIA LTD
(2013) LPELR-CA/L/858/11, per IKYEGH, J.C.A. is very instructive,
its lines run thus: “Finally in Ferodo Ltd. (supra) on pages
374-375 it was held inter alia on pages 374-375 that- “In the
exercise of comparison, it is wrong to take trade the two marks
side by side to determine whether they are identical or some close
resemblance exists within the provision of section 13 of the Act.
The issue is whether the person who sees or has seen the proposed
trademark will confuse it with the existing trademark, as to create
confusion and be deceived that the proposed trademark is the same
as the existing one. In the Matter of Application for Registration
of a TradeMark by Sandow Ltd. (1914) 31 RPC 196 of 205, Sargant,
J., made the point: ‘The question is not whether if a person is
looking at two trademarks side by side there would be a possibility
of confusion; the question is whether the person who sees the
proposed trademark in the absence of the other trademark, and in
view only of his general recollection of what the nature of the
other trade mark was, would be liable to be deceived and to think
that the trademark before him is the same as the other, of which he
has a general recollection.” One other way of conducting the
exercise of comparison is by looking closely at the first syllable,
being the word or part of the word which contains a vowel sound or
a consonant acting as a vowel. For instance, there are two
syllables in the word “win” and “dow”. The first syllables is much
more important than any other one because the victim of the
identical trademark wilt first come in contact with the first
syllable and take it as authentic or ‘golden’. In my considered
view, a person of average intelligence seeing and/or hearing the
sound of the words “Mana Liquid Soap” cannot confuse them with the
appellant’s trademark of “Mamalemon” be calculated to deceive him
that he is buying or patronising one and the same Mamalemon
product.”

I will answer 3 questions:

1. Is it necessary to show that Messi had an intention to deceive
   the public or that the public has been deceived in fact?

I answer in the negative. As long as the public might be
confused and believe that the goods of a particular enterprise
looks similar with that of another, it is sufficient proof. See
Niger Chemists v. Nigeria Chemist (1961) 1 All NLR 171. In this
instance, Messi’s brand is an attempt to deceive the public.

1. Can the defense of bonafide claim of right shield Messi?

I answer in the negative. This is because the major yardstick is
as to whether or not members of the public will find it confusing
to distinguish the brand of an enterprise from another.

Furthermore, in the case of VIRGIN ENTERPRISES LTD v. RICHDAY
BEVERAGES NIG. LTD. (2009) LPELR-CA/L/550/05, held: “Once a
proprietor of Trademark raises infringement the two conditions to
satisfy are in the alternative. It is either the mark is identical
or the resemblance can cause confusion, where both exist it is
still infringement. However it is not mandatory that both
conditions will exist to constitute infringement.

iii. Should the concept of fame and the conceptual differences
between ‘Messi’ and ‘Massi’ be taken with a pinch of salt?

I answer in the negative.

In my book, the place of fame towers in determining trademark
cases. This is because it quenches the idea of confusion or
misleading of the public. The quality and standard of fame paints a
picture of a popular and distinct brand. Although, Massi and Messi
have both visual and phonetic similarities, the place of fame
creates a differentiating line between the two names.

Moreover, I align myself with the position of the General Court
of the European Union on the ground that “even if the signs at
issue are similar overall, the conceptual differences between them
are such as to counteract the visual and phonetic similarities
identified.

Indeed, the Court considers that a significant part of the
relevant public will associate the term ‘Messi’ with the name of
the famous football player and will, therefore, perceive the term
‘Massi’ as being conceptually different. The degree of similarity
between the marks is not sufficiently high to accept that the
relevant public may believe that the goods at issue come from the
same undertaking or, as the case may be, from economically-linked
undertakings.”

CONCLUSION

The logo belonging to Messi and Massi can be distinguished. To
my mind, no two brands can be equally famous in all substance. It
is either one brand has or gains more recognition over another, or
vice versa; or nothing else.

AUTHORITIES

1. Trademarks Act Cap T12 Laws of the Federation of Nigeria (LFN),
   2004
2. Judex made Principles

This article was written by Prince I. Ubochi, a current
Entertainment Law Virtual Intern at Goldwhisk Consult.

Reach him via princeituma1@gmail.com or +2347065434356

LinkedIn:
https://www.linkedin.com/in/prince-ubochi-7b6bb2172

By Prince I. Ubochi

INTRODUCTION

I concede to 3 things:

1. Messi is a famous football star
2. The court is human
3. Every case has a unique measuring scale for determining whether
   the particular Judex or Judices sitting over a matter will hold one
   way or another

I stumbled into a piece which unveiled that the General Court of
the European Union gave a judgement in favour of Messi over what
clearly was a long legal sojourn in search of a destination between
Lionel Andrés Messi Cuccittini (hereinafter referred to as Messi)
and the owner of another sports apparel brand: Mr Jaime Masferrer
Coma, for Massi (hereinafter referred to as Massi).

With the zeal of a fanatic, I read the facts of the case; they
read:

“In August 2011, the footballer Lionel Andrés Messi Cuccittini
requested the European Union Office for Intellectual Property
(EUIPO) to register the following EU trademark, inter alia for
sports and gymnastics clothing, footwear and equipment.

In November 2011, Mr Jaime Masferrer Coma filed a notice of
opposition to the registration of Mr Messi’s trade mark claiming a
likelihood of confusion with the ‘MASSI’ EU word marks registered,
inter alia, for clothing, shoes, bicycle helmets, protective
clothing and gloves (the rights to those marks were transferred in
May 2012 to the company JM-EV e hijos). In 2013 EUIPO upheld the
opposition. Mr Messi lodged an appeal before EUIPO against that
decision. In April 2014 EUIPO dismissed the appeal. In essence,
EUIPO concluded that there is a likelihood of confusion between the
marks. It took the view that the marks at issue are similar because
their dominant elements, consisting of the terms ‘MASSI’ and
‘MESSI’, are almost identical visually and phonetically and that a
possible conceptual differentiation will be made, where
appropriate, only by part of the relevant public.”

Unsatisfied with EUIPO’s decision, Messi brought an appeal
before the General Court to have that decision annulled.

The EU General Court held, that Messi being one of the most
famous athletes in the world could use his name and logo in the
European Union. Reasoning further, the court pointed out that the
football player’s fame counteracts the visual and phonetic
similarities between his trademark and the trademark ‘MASSI’
belonging to a Spanish company.

To lay a solid foundation, the concept of Trademark needs to be
understood.

What is Trademark?

By virtue of section 67 (1) of the Trademarks Act, Cap T12 Laws
of the Federation of Nigeria (LFN) 2004, a Trademark is defined
as:

“A mark used or proposed to be used in relation to goods for the
purpose of indicating or so as to indicate a connection in the
course of trade between the goods and some person having the right
either as proprietor or as a registered user to use the mark,
whether with or without any indication of identity of that
person.”

In continuation, the Trademark Act defines a mark in section 67
(1) as including “a device, brand, heading, label, ticket, name,
signature, word, letter, numeral, or any combination thereof.”

A trademark is simply any sign that individualizes the goods of
a given enterprise and distinguishes them from the goods of its
competitors. In order to individualize a product for the consumer,
the trademark must indicate its source; this is sufficient if it
can be seen that a consumer can trust a given enterprise. Very
importantly, a trademark should be able to distinguish goods of a
given enterprise from those of other enterprises; only if it allows
a consumer to distinguish a product sold under it from goods of
other enterprises offered in the market can the trademark fulfill
its functions.

On the meaning of distinctiveness, the court has held in FERODO
LIMITED & ANOR. V. IBETO INDUSTRIES LIMITED (2004)
LPELR-SC.95/1999, that: “An essential element of a device claimed
to be a trademark is that it identifies the goods of a particular
merchant and distinguishes them from the goods of others. A word,
symbol, shape or colour serving this purpose is said to be
distinctive. Certain marks are inherently distinctive while others
only acquire distinctiveness over time. A distinctive mark may lose
its distinctiveness overtime and become generic.”

The court further explained the place of distinctiveness in the
case supra, thus: “In the law of trademarks, the element of
distinctiveness comes before that of passing-off in the way the
number 1 comes before the number 2. In other words, the plaintiff
must first prove to the satisfaction of the court that the
trademark has a distinctive character or nature, before he can
prove the movement of the trademark of the defendant in business
circles by way of passing-off.”

Adding more flavour, the protection of trademark has a moral,
social and an economic basis. By virtue of Article 27 (2) of the
United Nations Universal Declaration of Human rights, the law is
that “everyone has the right to the protection of the moral and
material interest resulting from any scientific, literary or
artistic production of which he is the author.”

In fact, the necessity for the protection of a trademark cannot
be undermined, this is because it benefits the society in the
following vital ways:

1. a) Promoting competition among enterprises
2. b) Protecting the public from deceit, and
3. c) Guaranteeing product quality

On the strength of section 49 of the Trademarks Act, in all
legal proceedings, the fact that a person is registered as
proprietor of the trademark shall be prima facie evidence of the
validity of original trade. See VIRGIN ENTERPRISES LTD v. RICHDAY
BEVERAGES NIG. LTD (2009) LPELR-CA/L/550/05. Also, an acceptance
letter can serve as sufficient proof of the registration of a
trademark. See D & S TRADING CO. LTD v. REMIA C. V. & ANOR (2019)
LPELR-CA/L/925/2016.

Importantly, in determining what must be considered in deciding
whether two marks are confusingly similar, the principle laid in
the case of HOLDENT INTERNATIONAL LTD v. PETERSVILIE NIGERIA LTD
(2013) LPELR-CA/L/858/11, per IKYEGH, J.C.A. is very instructive,
its lines run thus: “Finally in Ferodo Ltd. (supra) on pages
374-375 it was held inter alia on pages 374-375 that- “In the
exercise of comparison, it is wrong to take trade the two marks
side by side to determine whether they are identical or some close
resemblance exists within the provision of section 13 of the Act.
The issue is whether the person who sees or has seen the proposed
trademark will confuse it with the existing trademark, as to create
confusion and be deceived that the proposed trademark is the same
as the existing one. In the Matter of Application for Registration
of a TradeMark by Sandow Ltd. (1914) 31 RPC 196 of 205, Sargant,
J., made the point: ‘The question is not whether if a person is
looking at two trademarks side by side there would be a possibility
of confusion; the question is whether the person who sees the
proposed trademark in the absence of the other trademark, and in
view only of his general recollection of what the nature of the
other trade mark was, would be liable to be deceived and to think
that the trademark before him is the same as the other, of which he
has a general recollection.” One other way of conducting the
exercise of comparison is by looking closely at the first syllable,
being the word or part of the word which contains a vowel sound or
a consonant acting as a vowel. For instance, there are two
syllables in the word “win” and “dow”. The first syllables is much
more important than any other one because the victim of the
identical trademark wilt first come in contact with the first
syllable and take it as authentic or ‘golden’. In my considered
view, a person of average intelligence seeing and/or hearing the
sound of the words “Mana Liquid Soap” cannot confuse them with the
appellant’s trademark of “Mamalemon” be calculated to deceive him
that he is buying or patronising one and the same Mamalemon
product.”

I will answer 3 questions:

1. Is it necessary to show that Messi had an intention to deceive
   the public or that the public has been deceived in fact?

I answer in the negative. As long as the public might be
confused and believe that the goods of a particular enterprise
looks similar with that of another, it is sufficient proof. See
Niger Chemists v. Nigeria Chemist (1961) 1 All NLR 171. In this
instance, Messi’s brand is an attempt to deceive the public.

1. Can the defense of bonafide claim of right shield Messi?

I answer in the negative. This is because the major yardstick is
as to whether or not members of the public will find it confusing
to distinguish the brand of an enterprise from another.

Furthermore, in the case of VIRGIN ENTERPRISES LTD v. RICHDAY
BEVERAGES NIG. LTD. (2009) LPELR-CA/L/550/05, held: “Once a
proprietor of Trademark raises infringement the two conditions to
satisfy are in the alternative. It is either the mark is identical
or the resemblance can cause confusion, where both exist it is
still infringement. However it is not mandatory that both
conditions will exist to constitute infringement.

iii. Should the concept of fame and the conceptual differences
between ‘Messi’ and ‘Massi’ be taken with a pinch of salt?

I answer in the negative.

In my book, the place of fame towers in determining trademark
cases. This is because it quenches the idea of confusion or
misleading of the public. The quality and standard of fame paints a
picture of a popular and distinct brand. Although, Massi and Messi
have both visual and phonetic similarities, the place of fame
creates a differentiating line between the two names.

Moreover, I align myself with the position of the General Court
of the European Union on the ground that “even if the signs at
issue are similar overall, the conceptual differences between them
are such as to counteract the visual and phonetic similarities
identified.

Indeed, the Court considers that a significant part of the
relevant public will associate the term ‘Messi’ with the name of
the famous football player and will, therefore, perceive the term
‘Massi’ as being conceptually different. The degree of similarity
between the marks is not sufficiently high to accept that the
relevant public may believe that the goods at issue come from the
same undertaking or, as the case may be, from economically-linked
undertakings.”

CONCLUSION

The logo belonging to Messi and Massi can be distinguished. To
my mind, no two brands can be equally famous in all substance. It
is either one brand has or gains more recognition over another, or
vice versa; or nothing else.

AUTHORITIES

1. Trademarks Act Cap T12 Laws of the Federation of Nigeria (LFN),
   2004
2. Judex made Principles

This article was written by Prince I. Ubochi, a current
Entertainment Law Virtual Intern at Goldwhisk Consult.

Reach him via princeituma1@gmail.com or +2347065434356

LinkedIn:
https://www.linkedin.com/in/prince-ubochi-7b6bb2172