Messi narrowly lost his name trademark rights in Europe

Mondo Social Updated on 2024-03-06

On November 20, 2021, MGO signed a three-year trademark license agreement with Messi, under which Messi received 12% of the sales of the Messi brand as a licensing fee, with a minimum guarantee amount of 4 million euros (about 4.3 million US dollars).

Messi is the world's highest-paid player, and as early as 2005, he began to apply for trademarks in many countries around the world, including China, however, before signing a trademark license agreement with MGO, that is, on July 29, 2021, he successfully registered the Messi+ figurative trademark in the European Union.

Messi applied for a trademark in Europe with his own nameIt took 10 years to apply for the entire trademark, and I almost lost my name and trademark rights.

In fact, Messi applied for a trademark in the EU as early as August 2011:

The scope of protection is: 9 categories, 25 and 28 categories, among which:25 categories of protection: clothing, footwear, headwear.

Since EU trademarks only examine absolute grounds (distinctiveness and prohibition), if a search reveals a prior identical or similar mark, the trademark publication is usually sent to the prior right holder, who decides whether to oppose or agree to coexist.

Messi's trademark was opposedThe objector was a Spanish company, Jm.-e.v. e hijos, s.r.l., based on its 1998 and 2007 yearsPreviously registered and owned Massi trademarkDispute Messi's application for Messi.

The objectioned product:

Class 09: Life-saving instrumentation.

Class 25: Clothing, footwear, headwear.

Class 28: Games and toys; gymnastics and sporting goods not included in other categories; Christmas tree ornaments.

The examination of trademark oppositions throughout the EU has taken a long timeThe initial opposition decision was in favour of the rejection of the trademark, but Messi insisted on appealing, and in the court trial, it was finally determinedBased on a combination of factors such as Messi's very high personal reputation, it was ruled that the two trademarks would not cause confusion, and then they were registered。Both the opponent and the European Union Trademark Office appealed, butThe court upheld the verdict.

The commercial value of the name. The high popularity of celebrities and celebrities represents commercial interests and can be commercially endorsed, but commercial endorsements may not be sustainable. Protect business value. Applying for trademark protection is a legal means of brand protection, and the application and protection of trademark rights are also the most important means of intellectual property protection in the world.

Example: MGO brand licensing benefits from founder and chief creative officer Ginny Hilfiger, who is also the sister of the famous designer Tommy Hilfiger, as the design director of the Messi brand.

Messi's sister, Maria Sol Messi, serves as head of the Messi brand. Brand licensing is an important means for celebrities to earn money without having to be personally involved in business operations. It is important to note that while Messi is the only brand equity held by MGO, Messi is not a shareholder of the company.

Currently, MGO pays Messi 500,000 euros (about 53.5) in semi-annual installmentsUS$80,000) licensing fee, and as of October 2022, MGO has paid a total of €1.5 million (approximately US$1.61 million) in three tranches.

In fact, similar to the problems encountered by ordinary trademarks, celebrities do not have privileges, and even more factors need to be considered.

Planning:Celebrity celebrity registered name trademark,Whether it's a real name or a stage name, you need to plan。The intent to apply for a trademarkIs it based on use or defense?For example:Hong Kong star Zhang Jiahui applied for the trademark of Zhahuito prevent misuse by others. Application Preparation:Depending on the country where the application is filed, the trademark examination system is also different, and some countries are more strict in the examination of name trademarks, and there may be distinctiveness problems. Review:After filing the application, it may encounter refusal, opposition and other procedures, such as the Macy's EU trademark, which is subject to trademark opposition procedures. Maintenance:After the trademark is registered, depending on the country of protection, there will be renewal, oath, consideration of the prevention of revocation, and in the case of authorized use, there is also the need to pay attention to compliance and other considerations. Do a good job of business planning:For example, Macy's registered trademarks cover "clothing and footwear", "games, toys and sports equipment", "computing software", etc. Trademark application strategy development:According to the business plan, the business protection plan and strategy formulation, and the professional trademark search and analysis help to formulate the response strategy in advance. Macy's application for the trademark "leo messi, messi+ figure", and also applied for Macy's Chinese in China. Prior conflict plan and handling plan:comprehensive use of legal procedures, commercial means, etc.; In the Macy's EU trademark opposition case, the court appealed the process and finally ruled that the trademark would not constitute confusion due to the combined factors of celebrity influence.

In conclusion, celebrity popularity can have a huge impact on their personal brand, and registering a personal brand as a trademark can achieve long-term commercial benefits.

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