AC Milan lost a dispute regarding its EU trademark

The General Court of the European Union has ruled in case T-353/20 AC Milan v EUIPO, InterES.

The well-known Italian football club AC Milan has filed an application for the following European trademark for different goods including stationery and office supplies:

The German company InterES Handels- und Dienstleistungs Gesellschaft mbH & Co KG has filed an opposition against this application based on its earlier German word mark MILAN with priority from 1984, registered for similar goods.

The EUIPO upheld the opposition finding both marks similar. The decision was appealed, however unsuccessfully.

First and foremost, the Court considers that the owner of the earlier mark proved genuine use. Although this mark has been used in combination with a figurative element representing the head of a bird, this by itself cannot alter the distinctive character of the mark where the dominant element is still the word MILAN.

When it comes to the comparison of both trademarks, the Court finds that although the mark applied for consists of graphic elements and a year, the dominant element that attracts the consumer’s attention is the word part AC MILAN, which is dominant in the mark’s composition.

According to the Court, although some consumers will recognize the latter mark as associating with the football club, the word MILAN in both signs refers mainly to a city in Italy.

With regard to the contention by the football club that consumers cannot be confused between the mark because AC Milan has a strong and long-lasting reputation, the Court reminds that in case of similarity assessment the only reputation that is relevant is that one of the earlier marks if there is such. The reputation of the mark applied for is irrelevant.

Taking into account all facts and arguments, the Court upheld the opposition.

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Trademark exhaustion and cosmetics in Milan

The Court of Milan ruled in a case regarding trademark infringement and the principle of trademark exhaustion.

The Italian cosmetic producer Landoll S.r.L accused a retailer of infringement of its registered trademarks NASHI and NASHI ARGAN because the retailer wasn’t authorized to sell the products bearing these marks.

The defending argument of the retailer was that it had been selling these products lawfully because of the concept of trademark exhaustion in the EU according to which:

1. An EU trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent.
2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.

The Court of Milan, however, disagreed with that argument applying the Coty judgment of the European Court, stating that there was a trademark infringement because in the case at hand Landoll S.r.L had developed a legitimate selective distribution system of authorised dealers in order to ensure maximum consumer satisfaction as a result of the products use. In that way, the cosmetic company tried to safeguard its trademarks value among the consumers.

Source:K&L Gates – Arthur Artinian, Jennifer P.M. Marsh, Francesco Carloni and Gabriela R. Da Costa, Lexology.

Image: kinkate , Pexels.