AC Milan Goes Down in Trademark Battle over Stationery

InterES beats Milan 1-0: Non-Registrability of Logo

Dr. Susanna Deguara co-authored with Dr Maria Chetcuti Cauchi | 18 Jan 2022

AC Milan Trademark Battle

The Rossoneri lately battled an unusual adversary on foreign grounds … the trademarks arena. AC MILAN seeks to claim protection for its famed trademark in many areas, mainly for everything that makes sense in merchandising. In its attempt to register its club crest as an international trademark, AC Milan was opposed by InterES, a stationary supplier. The former’s application was eventually refused at General Court level. This was based on the similarity of the two logos, both visually and phonetically, with the likelihood of confusion at the core of such decision. 

AC Milan Trademark Battle - Background

The quandary dates to 2017 when AC Milan filed an application for International Registration (“IR”) for the word and figurative mark AC MILAN, designating the European Union with the European Union Intellectual Property Office (“EUIPO”) under the EU Trademark Regulation within the class of goods covering stationery and other office supplies. The goods in respect of which registration was sought are in Class 16 of the Nice Agreement correspond to the following description:

‘Paper; cardboard; book covers; glue for stationery or household use; stationery; copying paper [stationery]; writing paper; [stationery]; marker pens; staples for offices; drawing materials; writing materials; school supplies [stationery]; rubber erasers; ink; correcting fluids; stencils [stationery]; pencils; charcoal pencils; slate pencils; pencil leads; pens [office requisites]; steel pens; pencil holders; pencil lead holders; penholders; balls for ball-point pens; writing instruments; drawing instruments; notebooks; seal ink pads; pencil sharpeners; drawing pens’.

In the application for registration, the applicant claimed the following colours: red, black, and white. This IR trademark was also granted and published.

In April of the same year, InterES Handels-und Dienstleistungs Gesellschaft mbH & Co KG (“InterES”) filed an opposition to the registration of the mark in respect of the goods referred to above requesting non-registration basing itself on its own German registered word mark MILAN, filed in 1984 and registered in 1988. 

At the request of the applicant, the other party to the proceedings before the Board of Appeal was invited by EUIPO to provide evidence of genuine use of the earlier marks relied on in support of its opposition. InterES complied with that request within the time limit set by EUIPO for that purpose.

According to InterES, the application by AC Milan would infringe InterES registered trademark since the former designated products similar or identical to those of the latter. InterES claimed that any potential issuance of the trademark to AC Milan would present the likelihood of causing confusion on the part of the German public. 

On 22 January 2019, the football giant filed a notice of appeal with EUIPO, against the decision of the Opposition Division and brought forward a plea of non-use against the stationary brand.

The Decision Process

By way of process explanation, it’s important to note that European Union trademarks and Community designs registered status cover the entire territory of the EU. EU trademarks coexist with national trademarks. Any application for registration of an EU trademark is addressed to EUIPO and subsequently, any actions against such decisions may be brought before the General Court.

In this case, through the decision of 14 February 2020, EUIPO upheld the opposition in its entirety. 

On its part, AC Milan brought an action against EUIPO’s decision before the General Court of the European Union (“General Court”).

On 10 November 2021, the General Court dismissed the action in its entirety

Action

Proof of Genuine Use

The main arguments brought by AC Milan were mainly centered around:    

  • proof of use of the earlier German trademark MILAN in the relevant 5-year period
  • likelihood of confusion between the two marks.

Based on a series of items of evidence, particularly invoices and advertising content, published in German, the General Court noted that the earlier mark had been put to genuine use in Germany. In its argumentation, rather than restricting itself strictly to the usual non-use five-year period, the court not only considered invoices, catalogues, etc. from the relevant five-year period for its decision, but also additional evidence that did not originate from such relevant period. 

The Court followed mainly eight principles set out in the ‘Minimax’ case. The case delineated that actual usage of the mark is to denote ‘use’ which is not merely token use where the latter serves solely the purpose of preserving the rights conferred by the mark. ‘Use’ must be consistent with the essential function of a trademark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling the latter, without any possibility of confusion, to distinguish the product or service from others that have another origin. Genuine and actual use entails use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaking concerned.

With regards to AC Milan’s argumentation related to place of use, the existence of brochures and catalogues written in German as well as price lists stated in euros suggested distribution throughout Germany.

The Court emphasized that continuity of use is one of the most pertinent indicators proving genuine use and that the commercial life of a product generally extends beyond a certain period. Consequently, records outside the pertinent timeframe were not to be deemed as immaterial but had to be considered and assessed together with the other indicia.

Likelihood of Confusion 

AC Milan claimed that the Board of Appeal wrongly found that there was a likelihood of confusion. Particularly AC Milan claimed that the Board failed to:

  • consider the high reputation of the mark applied for
  • it incorrectly assessed the dominant and distinctive elements of the mark,
  • erred in its assessment of the comparison of the conflicting signs and,
  • was mistaken in its overall assessment of the likelihood of confusion.

On the other hand, InterES argued that in its opposition that:

“Due to the similarity of the Rossoneri brand to ours, the registration of the former will be likely to cause a likelihood of confusion on the part of the German public.”

The Board of Appeal noted, first, that the earlier mark had normal inherent distinctiveness, which is not disputed by the applicant. 

Secondly, it noted that the goods in discussion were, identical or similar to each other, to a high degree and that the conflicting signs were, as a whole, similar. 

It added that the visual differences between the conflicting signs, due mainly to the figurative element of the mark applied for, were not sufficient to neutralize the high similarities that exist at phonetic level and, at least for part of the relevant public, at conceptual level. 

Finally, it stated that the identity or high degree of similarity of the goods at issue was such as to compensate for the perceptible differences between the conflicting signs. 

Based on the above elements, the Board of Appeal concluded that there was a likelihood of confusion. For the sake of completeness, it stated that such a likelihood would exist even if the distinctive character of the earlier mark was weak.

In view of the above two arguments, the court proceeded with dismissing the claims brought forward by AC Milan: 

“The high phonetic similarity and visual similarity of this sign with the ‘MILAN’ trademark entails a risk of confusion on the part of consumers which prevents their simultaneous protection in Germany as regards stationery products (such as pens, pencils, and notebooks),” the Court said.

Do you have a mark which you want to protect? Our intellectual property practice group is more than happy to help! Our team of dedicated lawyers strive to obtain the best protection to their clients. 

Get in touch to find out how you can boost your IP protection. 


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