A refresh of certain trademark rules thanks to AC Milan

What happened?

In February 2017, the well-known football club Associazione Calcio Milan SpA (“AC Milan”) filed an application to register its emblem as an international trademark designating the EU for many goods including goods in Class 16 (paper, cardboard, stationery items, writing materials, etc.).

Defending its German word trademark “Milan” registered in 1988 for goods such as “paper”, “cardboards”, “stationery” in Class 16, the German office supply store InterES¹  introduced an opposition before the European Union Intellectual Property Office ("EUIPO") to prevent the registration of AC Milan’s trademark application with respect to the goods mentioned above. InterES was claiming the existence of a risk of confusion between its prior trademark and AC Milan’s trademark application for these goods.

The signs at issue were the following:

Both the EUIPO’s Opposition Division and the Board of Appeal upheld the opposition, which led AC Milan to request the annulment of the Board of Appeal’s decision before the General Court of the European Union (“General Court”). On 10 November 2021, the General Court dismissed AC Milan’s action in its entirety² .

What is the key takeaway?

Quite classical, this judgment is an opportunity to refresh key rules of trademark law regarding :

• the assessment of the genuine use of the earlier trademark; and
• the importance of the principle of interdependence in the assessment of the risk of confusion.

Further points of attention: the role of the respective reputation of the conflicting signs when assessing the risk of confusion

The Milanese football club was arguing that the Board of Appeal should have taken into account, in the context of the assessment of the risk of confusion, the high reputation of the sign applied for and of the club AC Milan.

The General Court dismissed the argument in a terse way and reaffirmed that only the reputation of the earlier trademark shall be taken into account in order to assess whether the similarity of the goods designated by the conflicting signs is sufficient to lead to a risk of confusion. This rule tends to protect the owners of existing trademarks against subsequent trademark applications for signs already known to the general public.

In the past, however, the position of the Court of Justice of the European Union (“Court”) has not always been as clear-cut.

In a recent decision of 17 September 2020 concerning opposition proceedings involving another player in the world of football, the Argentine footballer Lionel Messi who, in 2011, had filed the trademark application

(in particular for clothing and sporting goods), the Court did take into account the reputation of the person requesting one’s name to be registered as a trademark, since this reputation may have an influence on the perception of the trademark by the relevant public.

For more information, please read our article here.