From the «304» of Lamine Yamal to the Messi surname: what footballers' registered trade marks teach us

After Spain won the World Cup, the EUIPO —the European Union Intellectual Property Office, headquartered in Alicante— lit up its building in the colours of the Spanish flag and posted a message that went unnoticed by almost everyone: "Did you know that the Spanish Football Federation is also one of the most active IP users in the world of sports?"

This is no decorative detail. The players in that squad have spent years building, with their lawyers, trade mark portfolios worth as much as their contracts. Two examples —one recent, one that reached the Court of Justice— capture everything a business should know about protecting its distinctive signs.

The «304» of Lamine Yamal: seven trade marks and a postcode

Lamine Yamal holds seven European Union trade marks before the EUIPO, protected until 2035. Two cover his name and surname; the other five revolve around a number: «304», alongside variants such as «LY304» and «304 FC».

The number is not random. These are the last three digits of the postcode of Rocafonda, his neighbourhood in Mataró, and the gesture with which he celebrates his goals. In other words, he registered as a trade mark a sign that meant nothing to the public until he turned it into a recognisable symbol.

The scope of the registration is just as revealing. The first marks bearing his name were registered for clothing, sportswear, caps, jackets, trainers and even underwear; shortly afterwards the EUIPO protected «304», «LY304» and «304 FC» for footballs, gloves, dolls, glasses, helmets, watches, headphones, backpacks, weight bars and video games.

Two lessons follow for any business. First: a trade mark does not protect fame, it protects the sign, and only for the goods and services for which it is registered —hence the breadth of categories covered. Second: a number, a gesture or a colour can be a trade mark if it comes to identify commercial origin, even where it began as something ordinary.

Not just the name: the boom in registering goal celebrations

The Lamine Yamal case is not an isolated one. In recent years a practice has taken hold that says a great deal about how an athlete personal brand is managed today: registering the goal celebration.

Spanish international Dani Olmo has registered as a trade mark his gesture of pointing at his wrist, as if marking the time. Brazilian forward Vinicius Jr. protects several marks, among them his «BailaViniJr» celebration. Nor is this limited to players: clubs are intensive users of industrial property, with Real Madrid leading on the number of trade marks registered in the European Union.

Legally the approach is coherent. A recognisable celebration can be protected as a figurative mark —a drawing of the gesture, a logo representing it— provided it is capable of distinguishing goods or services and passes the distinctiveness examination. What is registered is not the movement in the abstract but the sign representing it, which is then printed on shirts, trainers or video games.

For a business the translation is direct: if a gesture can be a trade mark, so can your logo, your packaging, a corporate colour or your own slogan. The right question is not "do I have a name?" but "which elements identify me to my customer, and which of them are protected?".

The Messi case: nine years to register your own surname

The second example shows what happens when you arrive late. In 2011, Lionel Messi applied to the EUIPO for the mark «MESSI» (application no. 010181154) for goods in classes 9, 25 and 28 —sports articles and clothing—. The office refused registration: an earlier mark, «MASSI», existed and a likelihood of confusion was found.

The player appealed. The General Court, by judgment of 26 April 2018, annulled the decision, holding that the player's repute neutralised the visual and phonetic similarities between the signs and ruled out any likelihood of confusion. The EUIPO and the owner of «MASSI» appealed, and the Court of Justice, by judgment of 17 September 2020 (joined cases C-449/18 P and C-474/18 P), dismissed both appeals.

The doctrine matters well beyond football: the renown of the Messi surname, as that of a world-famous footballer and public figure, is a well-known fact that the EUIPO should have taken into account when comparing the signs conceptually, because consumers associate «Messi» with a specific person rather than with a variant of «Massi».

Even so, the case should be read in full: Messi won, but it took him nine years and three instances to register his own surname, and he succeeded thanks to an argument —being world famous— that no ordinary business can rely on. If a similar earlier mark stands in your way, you will not have Messi's renown to neutralise it.

Why this affects you even if you do not play football

The mechanism is identical for a winery in Jumilla, a canning business in Molina or a technology start-up in Murcia. Three practical conclusions:

Register early, not late. In practice the first to file prevails. Messi's problem was not his surname but the fact that «MASSI» had been registered first. A mark used for years but never registered is far weaker than one registered yesterday.

Search before you invest. A properly conducted prior-rights search avoids losing the fee and, above all, having to rename a product already on the market, with its signage, website and packaging.

Protect everything that distinguishes, in the right classes. Not only the trade name, but the logo, a slogan, a number or a graphic element —and in the Nice classes where you actually operate or plan to operate.

Spanish trade mark or European Union trade mark?

This is the practical decision that should not be improvised. In Spain there are two routes, and they do not compete: they complement each other.

The national mark, filed with the Spanish Patent and Trademark Office (OEPM), protects only within Spanish territory. It is the natural option where the business is local or regional —a clinic, an advisory firm, a restaurant, a construction company operating in the Region of Murcia— and it costs appreciably less.

The European Union trade mark, filed with the EUIPO, protects across all twenty-seven member states with a single application. It pays off where you export, sell online outside Spain, or expect to grow into the European market: registering country by country would be far more expensive and slower.

The criterion is not the budget but where you sell today and where you will sell in three years. A frequent mistake is registering only in Spain, growing abroad and discovering the name is already taken in the very market you wanted to enter —at which point rebranding costs far more than the fee saved—.

How to register an EU trade mark

The system has an enormous virtue for exporting businesses: a single application to the EUIPO takes effect in all twenty-seven member states, with no need to register country by country. Since 1994, the Alicante office has registered around 135,000 EU trade marks and 100,000 registered Community designs each year.

The practical points under Regulation (EU) 2017/1001:

• Fee: an electronic application starts from a basic fee of €850 covering one class; each additional class attracts its own fee.
• Examination: signs devoid of distinctive character, descriptive signs and those customary in ordinary language are refused (article 7). This is why celebration slogans filed after a title almost always fail.
• Opposition: once published, third parties have three months to oppose on the basis of earlier rights (article 8).
• Bad faith: anyone registering another party's sign to block its legitimate owner or resell it risks invalidity under article 59.1(b).
• Duration: ten years, renewable indefinitely.

Frequently asked questions

What trade marks does Lamine Yamal own?

Seven European Union trade marks before the EUIPO, protected until 2035: two covering his name and surname and five built around «304» —including «LY304» and «304 FC»— for clothing, footwear, accessories, watches, backpacks and video games, among other goods.

Can a number or a gesture be registered as a trade mark?

Yes, provided it is capable of identifying the commercial origin of goods or services and passes the distinctiveness examination in article 7 of Regulation (EU) 2017/1001. The «304» is a good example.

Why did the EUIPO initially refuse the «MESSI» mark?

Because of a likelihood of confusion with the earlier mark «MASSI». The General Court annulled that decision in 2018 and the Court of Justice confirmed it on 17 September 2020: the player's renown conceptually neutralises the similarity between the two signs.

Can I register my own name as a trade mark?

Yes, although it may conflict with similar earlier marks and, where the name is that of a well-known person, with their right to their name and image, protected in Spain by Organic Law 1/1982.

Does my Spanish trade mark work across Europe?

No. A mark registered with the Spanish Patent and Trademark Office protects only in Spain; for the rest of the internal market you need an EU trade mark or national registrations.

How we help with trade marks and patents at RCM Legal

Some decisions look administrative but are strategic: choosing between a Spanish and an EU trade mark, defining the right classes before investing in a campaign, reacting within the deadline to a competitor's application, or recovering a sign opportunistically registered by a third party. All are better resolved before a conflict arises than afterwards, when the brand is already on the market and change costs money and reputation.

At RCM Legal we advise companies and entrepreneurs on protecting their distinctive signs: prior-rights searches, filing and prosecution before the Spanish Patent and Trademark Office and the EUIPO, oppositions, invalidity actions and defence against infringement. If you are looking for a trade mark and patent lawyer in Murcia or need to protect your brand across the European Union, you can tell us about your case and we will assess the strategy that best fits your business. You can read more in our guide on trade marks and patents to protect your company.