AC Milan mark survives Marriott opposition
Hotel owner Marriott Worldwide has failed in its bid to block a trademark registration owned by Italian football club AC Milan, following a ruling of the EU General Court.
In the judgment, issued today, June 19, the court ruled that the EU Intellectual Property Office (EUIPO) had been correct to grant registration of the Italian club’s logo.
AC Milan filed a mark bearing a design featuring its name and signature red and black colours in 2013. The application covers class 43, including goods and services such as hotels, temporary accommodation, tourist homes and restaurants.
Marriott opposed the application in 2014, citing three of its own trademarks, including a word mark for “AC”, a logo for “AC Hotels Marriott”, and a word mark for “AC Hotels by Marriott” (EU numbers 11594281, 10026871, and 10032829, respectively).
Each of Marriott’s earlier marks was registered in class 43.
In 2017, the EUIPO threw out Marriott’s opposition, finding that “the signs at issue were visually and phonetically different or, at most, similar to a very low degree and that there was no conceptual similarity between them”.
Today, following an appeal by Marriott, the General Court upheld the EUIPO’s decision.
In its ruling, the court backed the EUIPO’s earlier findings that the ‘AC’ element of the Italian football club’s mark was so small that an average consumer would not notice it initially. ‘AC’, the court ruled, was therefore negligible in forming the overall impression the mark gives to the consumer.
The court also rejected Marriott’s argument that the ‘AC’ element of its own earlier marks was highly distinctive owing to its lack of inherent meaning. According to the ruling, this argument was unsubstantiated by evidence.
“... there is no rule that establishes that the absence of any conceptual link between an element of a mark and the goods or services which it covers automatically confers on that element a high degree of inherent distinctiveness,” the court said.
Marriott submitted that, on the back of failing to take into account the ‘AC’ element of the Italian club’s mark, the EUIPO had wrongly concluded that there was little visual similarity between the contested signs.
As well as backing the EUIPO’s findings on the significance of the ‘AC’ element, however, the General Court also noted that there were “many visual differences” between the contested marks, including AC Milan’s red, black and gold colour scheme.
Marriott also made similar arguments with respect to the phonetic similarity between the marks. The court, however, noted that in the football club’s application, the ‘Milan’ element constituted a “significant element” distinguishing it from Marriott’s signs.
As the EUIPO was correct in finding little similarity between the marks, the court upheld the earlier decision that there was no likelihood of confusion.
The court ordered Marriott to pay costs to the EUIPO.
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