The General Court of the European Union Confirms that the Sign Representing the Crest of the Football Club AC Milan cannot be Registered Internationally as a Trade Mark!

Fikri Mülkiyet Hukuku

The General Court of the European Union(“Court”) confirms that the sign representing the crest of the football club AC Milan cannot be registered internationally as a trade mark designating the Union for stationery and office supplies.

Court stated the the high degree of aural similarity and average visual similarity of that sign with the earlier German word mark MILAN gives rise to a likelihood of confusion on the part of consumers which excludes their simultaneous protection in the Union.

In February 2017, the Italian football club AC Milan filed an application for international registration designating the European Union with the European Union Intellectual Property Office (EUIPO) under the EU Trademark Regulation.

In April 2017, the German company InterES Handels- und Dienstleistungs Gesellschaft mbH & Co KG filed an opposition against the registration applied for on the basis of the German word mark MILAN, filed in 1984 and registered in 1988, designating, inter alia, and in substance, goods identical and similar to those referred to in the application of AC Milan.

EUIPO upheld the opposition in its entirety on 14 February 2021. After that AC Milan brought an action against EUIPO’s decision before the General Court of the European Union. Given that, the Court dismissed the action in its entirety.

The Court noted, on the basis of a series of items of evidence, in particular invoices and advertising material written in German, that the earlier mark has been put to genuine use in Germany.

The Court also stated that the earlier mark was used on the German market, first, as registered and, secondly, in an amended form characterised, in particular, by the addition of a figurative element representing the head of a bird, similar to a bird of prey. In that context, the Court emphasises that, while it is true that the additional figurative element is not insignificant in character, it cannot be regarded as dominant and capable of altering the distinctive character of the word element constituting the earlier mark as registered.

According to the Court decision, the element 'ac milan' constitutes the dominant element of the mark applied for. In that context, the Court finds that, while part of the relevant public may perceive the word element 'ac milan' in the mark applied for as a reference to that football club in the city of Milan (Italy), the conflicting signs, which have a high degree of aural similarity, both refer to the city of Milan.

Consequently, the Court finds that the similarities of the two signs at issue are, taken as a whole, sufficient to conclude that there is a likelihood of confusion.

You can find the full text of the Court decision here.

 

Kind regards,

Zumbul Attorneys-at-Law

info@zumbul.av.tr