AC Milan fails in its attempt to register its club logo as a trade mark before the General Court. Professional clubs should not count on their brand recognition for their brand strategy.
Yet another new trade mark dispute involving a top club in European football, again involving a Milan-based club. However, unlike the trade mark dispute between Inter Milan and Inter Miami, this time the bone of contention is not the club name "AC" or "Associazione Calcio" (as in the case before the USPTO), but the place name "MILAN".
General Court: AC Milan club emblem cannot be registered as a trade mark for stationery and office supplies
In February 2017, AC Milan filed an application for international registration designating the European Union with EUIPO for a figurative sign concerning stationery and office supplies. A Nuremberg-based company filed an opposition against this, relying on the German word mark MILAN, which had already been filed in 1984 and registered in 1988, and which also relates, inter alia, to goods that are identical or similar to those covered by AC Milan's application.
On 14 February 2020, both EUIPO's Opposition Division and Board of Appeal upheld the opposition in its entirety. The appeal brought by AC Milan against this decision was dismissed by the General Court (judgment of 10 November 2021 – T-353/20), confirming the view that AC Milan crest club emblem is not eligible for international registration as a trade mark for stationery and office supplies in the EU due to the earlier trade mark, "MILAN".
Likelihood of confusion between club logo and earlier word mark "MILAN"
In addition to AC Milan's objection relating to the absence of genuine use, the General Court addressed the issue of the likelihood of confusion between the signs in dispute, arriving at an outcome that is at least debatable.
The General Court argued that while the target public will not ignore the club crest in AC Milan's mark applied for because of its size and position, they will not focus on it either. Its attention is drawn instead, per the General Court's argument, to the verbal elements "AC" and "MILAN", because they are in a stylised font and capitalised, and the resulting mark element is reproduced much more prominently than the club crest. Therefore, "AC MILAN" is the dominant element of the mark applied for.
On this basis, the General Court concluded that the mark was visually similar to an average degree, and very similar phonetically, to the German word mark "MILAN". Nor did the General Court believe that the addition of the word 'AC' would be sufficient to avoid giving rise to a likelihood of confusion on the part of the average consumer in the stationery sector.
AC Milan football club's reputation of no avail
From the outset, this assessment of similarity of the two signs by the General Court is very debatable. However, the significance of the judgment, which goes beyond the specific case, lies elsewhere. The General Court rejected AC Milan's objection that it had failed to take into account the high profile of the AC MILAN sign and AC Milan football club. On this point, the General Court, citing a CJEU decision (judgment of 3 September 2009 – C-498/07 P, margin no 84 – Aceites del Sur-Coosur v Koipe), merely reiterated that only the reputation of the earlier mark and not that of the mark applied for must be taken into account. However, this statement is less clear and obvious than it appears. This is a dispute that has previously arisen in other decisions and has been the subject of different judgments.
As early as 1957, the German Federal Court of Justice (BGH) was confronted with this question and acknowledged a "reciprocal effect" of the distinctive character (German Federal Court of Justice, judgment of 10 May 1957 – I ZR 33/56 – Wipp). Adopting this "empirical approach", the German Federal Court of Justice found that the reputation and thus the increased distinctiveness of the younger mark did not reduce the likelihood of confusion, but had the same effect, as it worked in both directions and thus the older mark could simply be mistaken for the younger one.
By contrast, in 2018, the General Court took a different view in its "Messi" decision, finding that a large part of the relevant public would perceive a difference between the marks "Messi" and "Massi", as the footballer's popularity meant that the average consumer would not confuse the sign "Massi" with the name of the world-famous footballer. That General Court considered that this conceptual difference counteracted the visual and phonetic similarities between the two marks (General Court judgment of 26 April 2018 – T-554/14 – Messi).
It is not clear why this approach – which is probably more reflective of actual consumer perception – was not also applied to this case. Finally, AC Milan and its club crest can also legitimately claim special recognition in football-fanatical Europe, which is probably sufficient to mitigate any risk of confusion with the simple word mark "MILAN". There is no apparent reason why the court did not engage in similar deliberations as in the Messi case. As a result, the decision is at least not entirely convincing.
What this means for football clubs: brand strategy should be top of the agenda
Whether the CJEU will confirm the General Court's view remains to be seen. At present, even a sign as well known as AC Milan's club eblem may fail to be registered as a trade mark because, according to the General Court, its reputation should not be taken into account when assessing the risk of confusion.
When the court is likely to make an exception to this rule, as in the "Messi" case, is almost impossible to predict and therefore – at the present time – football clubs should not count on it for their brand strategy.