25 August 2022FeaturesJurisdiction reportsClaudio Balboni

AC Milan’s trademark defeat: a misfire over meaning

Most of the IP world knows what happened in case T-353/20. Many IP newsletters, blog posts, and articles spoke about the fact that the Sixth Chamber of the General Court of the European Union had rejected the registration of the figurative European Union trademark application in the name of the world-famous football club AC Milan, in connection with stationery items.

This was due to the presence of the earlier German word mark “Milan” registered by InterES Handels- und Dienstleistungs Gesellschaft.

The sentence, which was passed down on 10 November 2021, clearly and indisputably applies all the well-known principles used to assess whether two trademarks are in conflict or not.

Nevertheless, from my point of view, it would have been important to go further and to consider real-life situations.

Tackling ‘conceptual’ similarity

The applied-for trademark is the device logo of AC Milan, which is surely recognisable for the majority of EU consumers.

Everybody knows the AC Milan Football Club. Moreover, most people will recognise the AC Milan logo, even non-soccer fans, like me.

Soccer is probably the most popular sport in Europe, in fact this sport has become more than just a game. Its reach can be seen in societies at large, in politics and in economies.

In the decision under consideration, in point 114, the Court affirmed that “the applicant’s argument based on the alleged reputation of the mark applied for is entirely irrelevant” because “only the reputation of the earlier mark, and not that of the mark applied for, must be taken into account” (point 113).

The error in the above reasoning lies in the fact that in the present case it would not even be necessary to invoke the “reputation” of the applied for mark, as the issue can and must be resolved merely based on the global assessment of the risk of confusion.

This global assessment must also be made by taking into account the “conceptual” similarity of the signs.

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