Appeal brought on 19 July 2018 by J.M.-E.V. e hijos, S.R.L. against the judgment of the General Court (Sixth Chamber) delivered on 26 April 2018 in Case T-554/14 Messi Cuccittini v EUIPO — J.M.-E.V. e hijos
(Case C-474/18 P)
Language of the case: Spanish
Parties
Appellant: J.M.-E.V. e hijos, S.R.L. (represented by: J. Guëll Serra and R. Gimeno-Bayón Cobos, abogados)
Other parties to the proceedings: European Union Intellectual Property Office and Lionel Andrés Messi Cuccittini
Form of order sought
The appellant submits that the Court should:
Set aside, in whole, the judgment under appeal of 26 April 2018 in Case T-554/14; 1 and, accordingly
Give final judgment in the matter, if the state of the proceedings so permits; or
Refer the case back to the General Court for judgment in accordance with the binding criteria of the Court of Justice; and
Order Mr Lionel Andrés Messi Cuccittini to pay the costs.
Grounds of appeal and main arguments
In the judgment under appeal, the General Court annulled the decision of the Board of Appeal of EUIPO, which had refused the mark ‘MESSI’ on the ground of likelihood of confusion with the earlier mark ‘MASSI’, holding that, despite the marks ‘MASSI’ and ‘MESSI’ being visually and phonetically similar and referring to the same category of goods, the Board of Appeal had committed an error given that the conceptual differences between the marks prevent any likelihood of confusion.
The judgment of the General Court is vitiated by four errors of law, for which reason the appeal is brought on four grounds:
1. In the judgment under appeal, the General Court states that had the Board of Appeal taken into account the appellant’s reputation, it ought to have found that the word ‘messi’ was clearly different conceptually from the word ‘massi’. Contrary to what is stated in the judgment under appeal, the case-law of the Court of Justice and of the General Court has repeatedly held that the possible reputation of the mark applied for is irrelevant for the purposes of determining the likelihood of confusion with an earlier mark for the purposes of Article 8(1)(b) of the European Union Trade Mark Regulation.
2. The General Court also erred in finding that the reputation of the applicant’s surname was a well-known fact which ought to have been taken into account by the Board of Appeal, despite it not having been established or even claimed by Mr Lionel Messi himself before the Board of Appeal, since it was a fact that any person may know or which may be checked through generally accessible sources. The level of awareness of the applicant’s surname in Europe at the time of the decision in the opposition proceedings (12/06/2013) is not a matter which can be presumed in 2018, particularly as this had been neither relied upon before the Board of Appeal nor supported by any evidence.
3. In the present case, there was a new application (mutatio libelli), which prevented the appellant from properly defending itself, since the General Court allowed a new and separate plea in law which had not been relied upon before the Board of Appeal: the ‘distinctive conceptual MESSI effect’.
4. The judgment incorrectly applies the PICARO/PICASSO judgment given that (i) in the PICASSO/PICARO case the well-known mark was the opponent’s mark ‘PICASSO’ whereas, in the present case, the allegedly well-known mark is the mark applied for; and (ii) that judgment dealt with goods in respect of which the level of attention of the average consumer, at the time of purchase, is particularly high whereas the present case concerns goods intended for the reasonably well-informed and reasonably observant and circumspect average consumer in the European Union.
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1 ECLI:EU:T:2018:230