January 25, 2022
In February 2017, the Italian football club Associazione Calcio Milan SpA, better known as AC Milan, applied for an international registration designating the EU for the following figurative sign in Class 16 covering, inter alia, “stationery” and “office requisites”:
InterES Handels- und Dienstleistungs Gesellschaft mbH & Co KG (IHDG) opposed the application, citing Article 8(1)(b) of the Trade Mark Regulation (207/2009/EC), on the basis of its German registration for the word mark MILAN, registered in 1988 in Class 16 for, amongst other things, “Paper”, “stationery” and “office equipment”.
Following receipt of evidence from IHDG showing genuine use of its MILAN registration the Opposition Division at EUIPO upheld IHDG’s opposition.
AC Milan appealed to the Second Board of Appeal of EUIPO which dismissed the appeal. AC Milan appealed to the General Court.
The GC noted that when assessing the genuineness of the use of an earlier mark, an overall assessment must be made, taking into account all the relevant factors of the case. Further, the assessment implies a certain interdependence between these relevant factors. Therefore, a low volume of goods marketed under the mark may be offset by a high intensity or consistency of use of the mark over time, and vice versa. In addition, the turnover and quantity of goods under the earlier mark should be assessed, not in absolute terms, but in relation to other relevant factors, such as the volume of commercial activity, the production or marketing abilities of the undertaking and the characteristics of the goods or services in question.
The GC disagreed with AC Milan that the invoices submitted by IHDG did not show genuine use as they were addressed to retail customers in Germany, rather than end consumers. Use of a mark did not have to be directed at end consumers to constitute genuine use, the GC said. Further, the evidence was corroborated by the prospectuses and catalogues submitted by IHDG, written in German, with price lists in Euros.
Further, although the BoA had based its decision on some documents that did not, in fact, fall within the relevant period, the GC said that, according to case law, the commercial life of a product extends over time and continuity of use is one of the factors to be taken into account to establish that the use was intended to create or maintain a market share. Therefore, documents outside the relevant period, far from being irrelevant, must be considered together with the other evidence, which was what the BoA had done. Overall, the BoA had considered the evidence as a whole and had correctly decided that IHDG had made serious efforts to gain a commercial position in the relevant market.
AC Milan also argued that the BoA had erred by finding genuine use of the earlier MILAN mark during the relevant period based on evidence showing the earlier mark accompanied by the additional figurative element of the head of a bird of prey, i.e., in a form that altered the mark’s distinctive character. The mark used was as follows:
The GC noted that, for marks composed of both word and figurative elements, the former is considered more distinctive than the latter because the average consumer more easily refers to the product in question by citing the name, rather than by describing the figurative element. Further, the fact that an element is not negligible does not mean that it is dominant and vice versa.
In the GC’s view, the additional figurative element could not be regarded as dominant, as: (i) it was significantly smaller than the word element, MILAN, which occupied more than half of the sign; (ii) the fact that the figurative element slightly overhung the first letter of the word element did not distract from that word element; and (iii) the word MILAN remained clearly identifiable.
Therefore, the BoA had not erred by finding that, although the figurative element was not negligible, its addition was not capable of altering the distinctive character of the word element, i.e., the mark as registered. The GC also said that the stylisation of the word MILAN did not alter the distinctive character of the mark either.
Accordingly, the GC said that the BoA had correctly found that the earlier MILAN mark had been put to genuine use at the relevant time.
Comparing AC Milan’s application mark with IHDG’s registered mark, the GC agreed with the BoA that the marks had an average degree of visual similarity as the word “Milan” was the only element of the earlier mark and, in AC Milan’s application mark, it was the most important element and dominated its overall impression. Given that the signs were distinguished from each other by the presence of additional elements in the application mark, the BoA was right to find that the similarity was average, rather than high.
As for phonetic similarity, the BoA was right to find that the degree of similarity was high, as the additional words “AC” and “1899” in the application mark were secondary and in smaller letters.
As for conceptual similarity, the GC said that although there were three meanings for the word MILAN (the football club, the Italian city, and a bird of prey) only part of the relevant public would perceive the application mark as a reference to the football club and IHDG’s mark as a reference to a bird of prey, whereas both marks would be perceived as referring to the city of Milan. Therefore, the BoA had been right to find an average degree of conceptual similarity.
As for likelihood of confusion, AC Milan argued that the BoA should have placed more emphasis on the visual aspect of the signs, since choosing an item of stationery was generally done visually.
The GC said that, in the context of the overall assessment of the likelihood of confusion, the marketing conditions of the goods in question, and, therefore, the importance of visual similarity, was only one of the elements to consider in the overall assessment. Further, the fact was that the visual similarity was average and was reinforced by the other similarities (phonetic and conceptual), such that the similarities taken as a whole were of a sufficient degree to conclude that there was a likelihood of confusion.
Accordingly, the BoA had not erred by finding a likelihood of confusion. (Case T-353/20 Associazione Calcio Milan SpA (AC Milan) v EUIPO EU:T:2021:773 — to read the judgment in full, click here).