The European Court ruled that AC Milan could not register its logo as an international mark for stationery and office supplies due to the risk of confusion with the mark of a German stationery company.
In 2017, AC Milan, a well-known European football club, applied for the registration of the word and figurative mark “AC Milan” as an international mark with the Office of the European Union for the intellectual property (EUIPO). The Italian club, affectionately referred to as ‘I Rossoneri’, which means ‘Reds and Blacks’, in reference to the colors of the club’s jersey, enjoys trademark protection for its brand in many areas, but has sought to expand its protection to include stationery and office supplies. As a result, the club applied for a trademark in International Class 16, which is the class that covers paper products and various office items.
However, InterES Handels- und Dienstleistungs GmbH & Co. KG, a German stationery and office supplies company, objected on the grounds that the AC Milan trademark is very similar to its registered trademark, which it has registered in 1988. The German company sells various office supplies under the brand name “milan”.
EUIPO rejected AC Milan’s request to extend its trademark protection to include stationery because of a risk of confusion with the German trademark.
AC Milan quickly appealed the EUIPO’s decision to a European court, which upheld the decision in 2020. The Italian club had argued that the German company had not made “serious use” of the brand and questioned the inclusion of invoices to retailers. , not consumers. The place of use, they argued, will not confuse customers. The European Court rejected this argument because there was evidence of catalogs and brochures written in German and accompanied by price lists attesting to genuine use of the mark by the German company. AC Milan then argued that InterES uses the mark with a crow’s head, which is different from the figure used by the Italian club. AC Milan uses its main logo on the word AC Milan, which has an oval shape made up of a red cross on a white background and a red and black stripe – the colors of the Italian team. However, the court also rejected this argument. The court held that even though the mark has a different figurative element, the word element of the mark is more distinctive as consumers generally refer to products by name rather than by a description of their figurative mark.
AC Milan further argued that the court should take into consideration the well-known reputation of the football club and the high visibility of the club logo. The court also rejected this argument. The court considered that only the reputation of the earlier mark is relevant to assess the likelihood of confusion. Consequently, the European Court ruled that AC Milan cannot register its mark for stationery products because “the similarities between the two characters in the speech are sufficiently important to assert a likelihood of confusion”.
AC Milan still have two months to appeal the lower court’s decision to the European Union’s highest court, the European Court of Justice.
Importantly, the ruling does not affect the use of the word ‘AC Milan’ and the Italian club logo for other merchandise that is unrelated to stationery and office supplies. AC Milan further clarified that “the obstacle to registration only concerns German territory and the company is free to continue the registration process with national requests in all other countries of the European Union” .
Given this statement, it looks like AC Milan will simply waive protection in Germany and instead seek registration in each member country of the European Union, so that all is not lost on I Rossoneri.