The General Court, in a recent decision, confirmed 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 in class 16.
In February 2017, the football club filed an application for international registration designating the European Union for the following figurative sign concerning, inter alia, stationery goods and office supplies.
The application was opposed by the German company InterES Handels- und Dienstleistungs Gesellschaft mbH & Co KG on the basis of the German word mark MILAN, filed in 1984 and registered in 1988 in relation to goods identical and/or similar to those of the application of AC Milan.
During the opposition proceeding, AC Milan requested the Opponent to provide evidence of use of the trademark.
In its decision EUIPO considered the evidence provided by the Opponent sufficient and rejected the applied for trademark in class 16.
The Applicant filed an appeal before the Board of Appeal of EUIPO, that confirmed the arguments of EUIPO, and thus the existence of a likelihood of confusion between the two signs.
AC Milan decided to file a petition to the General Court by challenging the genuine use of the earlier mark that, in its opinion, altered the distinctive character of that mark as registered, and by challenging the conclusions on the likelihood of confusion.
Part of the proof of use provided by the Opponent showed the word mark MILAN, while the others the verbal element MILAN together with a graphic element as follows .
According to the Board of Appel, the use can be considered genuine also if in some of the evidence there was an additional graphic element.
This element, indeed, also if not negligible, cannot considered as dominant since the word element Milan occupies more than half of the sign.
Accordingly, the figurative element present in the earlier mark as used on the market was not capable of altering the distinctive character of the word element.
The General Court thus, refused the arguments of AC Milan and confirmed the conclusions of the Board of Appeal on the proof of use and on the likelihood of confusion between the two signs.
As consequence of this decision the trademark will not proceed to registration in relation to class 16.