By Simon Webster ‑ January 3, 2019
A Lawyer Monthly article on some of the most high-profile trademark disputes of 2018 got me thinking about some of the challenges around trademarking.
I was particularly interested in a dispute between Barcelona and Argentina footballer, Lionel Messi and Spanish cycling brand Massi. After a seven-year dispute, the high court in Luxembourg finally ruled in the footballer’s favour, enabling him to use his own name on sporting goods.
This was an important ruling. The high court accepted the terms ‘Massi’ and ‘Messi’ were similar but felt Lionel Messi’s reputation as both a footballer and celebrity, meant the likelihood of misrepresentation between the two brands would be low. Messi could, finally, use his own name on his own sports clothing range.
Historically brand equity in sport was largely based around the teams and clubs rather than individual players. As merchandise sales have increased, bolstered by star players, the pendulum is swinging towards the individual. In the past, stars of golf, football, tennis and beyond would have been paid to wear the clothing of brands such as Adidas and Nike. The Messi trademark case highlights a trend for sports stars to monetise their own name. Messi now joins David Beckham, LeBron James, Jack Nicholas and the Williams sisters as stars with clothing brands of their own.
One of the other interesting disputes was one between Netflix and Easyjet. Netflix created a comedy series called Easy this year, which incurred the wrath of easyJet founder Sir Stelios Haji-Ioannou. Stelios’ easyGroup has long sought to protect itself from any company using the term ‘Easy’ in its name.
Protecting ‘easy’ is not simple, as easyGroup found out several times in 2018. In January the High Court ruled against easyGroup in a case around the use of EasyRoommate as a trademark by a competitor. In February, Stelios failed to stop the registration of Easysail as a UK trademark by French textiles company Porcher. According to The Drum, easyGroup spends one million pounds a year pursuing what it describes as ‘brand thieves’. Is it worth it? Seemingly the courts are increasingly inclined to view the term ‘easy’ as something too generic to protect.
Perhaps there is an alternative. In 2004 two entrepreneurs, Gurpreet Sidhu and Jeewan Sagu, set up a takeaway delivery website called easyFood. Just Eat was gaining market traction and the business partners felt they could offer an alternative. Having registered the domain name easyfood.co.uk, the pair found themselves facing a challenge from easyGroup over their chosen name. The easyFood founders secured a face to face meeting with Stelios to resolve the naming dispute, which resulted in the billionaire entrepreneur investing directly in the company and enabling easyFood to use the orange branding associated with easyGroup companies.
Trademark disputes are rarely simple to resolve. They are long, expensive and unpredictable, as demonstrated by the length of time it took Lionel Messi to be able to use his own name. The case of easyFood demonstrates that active engagement to resolve a dispute out of court can not only be a more effective means to and end but can be the catalyst for building new partnerships and event investment.
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