MESSI and PICASSO: neutralisation of similarity by conceptual difference

Since the Picasso/Picaro judgment, we know that visual and aural similarity can be neutralised if the trademarks evoke different concepts. In the Wolf Oil/EUIPO judgment, the ECJ decided that neutralisation must take place at the end of phase 1, after assessing the degree of similarity at visual, phonetic and conceptual level. Neutralisation is only possible if at least one of the conflicting signs has a clear, fixed and immediately understandable meaning for the relevant public. The Equivalenza judgment reaffirmed that this is a hard condition for neutralisation.

But what if a clear, fixed and immediately comprehensible meaning has not been established for one or both signs for the relevant public? Then elements of similarity on a visual and/or aural level cannot be neutralised in the overall impression (phase 1). In that case, an overall assessment of the infringement must follow in phase 2. In phase 2, the established elements of similarity and difference are taken into account in the same way as other elements, such as the (similarity of) goods and services, the level of attention of the relevant public, the degree of distinctiveness and possible reputation of the earlier mark. All the elements in phase 1 remain on the table, including a conceptual difference which is not based on a clear, fixed and immediately understandable meaning for the relevant public but on a less clear conceptual difference. The overall assessment of the infringement in phase 2 is tailor-made: on a case-by-case basis, it is assessed to what extent the elements of similarity (or, on the contrary, elements of difference) carry more or less weight. If a certain "compensating effect" of a conceptual difference is assumed in phase 2, this may no longer be called a "neutralisation", but this effect can be taken into account.

In line with this doctrine the ECJ decided last week that Lionel Messi can finaly register his trademark MESSI for apparel. The opposition based on MASSI was unsuccessful, because the two signs are not similar. The visual and aural similarities are neutralised by the fact that nearly everyone knows Messi as a football player. Hence MESSI evokes the concept of the football player, while MASSI does not evoke anything - no conflict here. The leads to the funny situation that MASSI can successfully act against MOSSI (if it is ever introduced) while MESSI cannot. Neutralisation works both ways, just like Picasso’s heirs encountered long ago.

Maarten Haak