Turning the AC off as no likelihood of confusion is found: AC Milan survives AC Marriott opposition
On 19 June 2019, the EU General Court ruled that the EUIPO had been correct in granting registration of the figurative sign that Associazione Calcio Milan SpA (AC Milan) had applied for. [Case T‑28/18]
Background
On 29 May 2013, the intervener, AC Milan, obtained an international trade mark, registration (No 1182615) extending to the European Union for, amongst other things, Class 43 services ('providing food and drink; temporary accommodation; cafés; cafeterias; tourist homes; restaurants; self-service restaurants; hotels; bar services; food and drink catering; motels; snack-bars.')
On 21 August 2014, the applicant, Marriott Worldwide Corp. (Marriott), filed a notice of opposition to the international registration, in so far as it designated the territory of the European Union, in respect of the services referred to in Class 43.
The opposition was based on the three earlier trade marks listed below:
In a decision issued in January 2017, the Opposition Division rejected the opposition in its entirety, as the signs at issue were 'visually and phonetically different, or, at most, similar to a very low degree and that there was no conceptual similarity between them.'
In February 2017, the applicant filed a notice of appeal with the EUIPO, which was subsequently dismissed by decision of 16 November 2017 (the contested decision) of the Second Board of Appeal (BoA).
Forms of order sought
The applicant submitted to the Court, in essence, that the BoA had erred in finding that there was no likelihood of confusion between the signs at issue, and thus the Court should annul the contested decision and reject the registration of the sign applied for in respect of the services at issue. In support of the action, the applicant relied on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001:
Article 8(1) of Regulation 2017/1001: Relative grounds for refusal
Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:
(a) if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;
(b) if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
Comparison of the signs
As shown in the chart above, the four trade marks at issue have the element ‘AC’ in common. Moreover, the applicant owns the word mark ‘AC’, which, to some extent, can be seen as a ‘meta element’ for its three earlier ‘AC marks’. Thus, in order to keep the international registration away from Class 43 (which, as noted, includes ‘hotels’), the word element ‘AC’ is the part of the claim that Marriott considered must be strongly defended.
The distinctive and dominant elements of the signs at issue
The Court stated, or reiterated, several key points to consider regarding the global assessment of the likelihood of confusion:
‘The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements.’ (paragraph 27)
‘Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole… The Court of Justice has made clear that the fact that an element is not negligible does not mean that it is dominant, just as the fact that an element is not dominant by no means implies that it is negligible’ (paragraph 29)
‘Where a sign consists of both figurative and word elements, it does not automatically follow that it is the word element which must always be considered to be dominant.’ (paragraph 32)
– The distinctive and dominant elements of the sign applied for
The sign applied for iconsists of three parts: the round-shaped figurative element, the word element ‘MILAN’ and the relatively smaller word element ‘AC’.
The BoA held that: 1) On account of its size, position within the sign and colour, the figurative element of the sign applied for could not be ignored and that it thus dominated that sign visually; 2) Accordingly, ‘AC’ was illegible or negligible in light of its small size and its position in the overall composition of the sign, in which it was hardly noticeable; hence, there was a strong case that the element would be disregarded by the relevant public; 3) Further, the relevant public would associate the word element ‘MILAN’ with the Italian city of Milan and consequently with the place of origin of the services at issue or the place where the headquarters of the undertaking was located.
The applicant submitted that, inter alia, 1) the Board of Appeal had made an error in its analysis inasmuch as it concentrated solely on the dominant elements of the signs at issue, at the expense of the distinctive elements of those signs; 2) The word element ‘AC’ was the distinctive element of the sign applied for, because it was the only element which ‘has no meaning’ and was therefore not negligible, but immediately noticeable; 3) the BoA had not taken the distinctive character of the word element ‘AC’ into account in analysing the dominant elements of the sign applied for.
The Court effectively backed all the BoA’s assessments relating to the distinctive and dominant elements of the sign applied for, and concluded that the BoA had not made an error of assessment in finding – in essence - that if the word element ‘AC’ were perceived by the relevant public, that element would not dominate the sign applied for, in spite of its distinctive character.
– The distinctive and dominant elements of the earlier marks
The applicant submitted that the lack of meaning of the word element ‘AC’ conferred a high degree of inherent distinctiveness on that element. The Court noted that there was no rule that established that the absence of any conceptual link between an element of a mark and the goods or services that it covered automatically conferred on that element a high degree of inherent distinctiveness. In the absence of any other arguments put forward by the applicant or included in the case file, the argument alleging that the word element ‘AC’ was highly distinctive, which was not substantiated, would therefore need to be rejected.
In view of the above, the Court upheld the BoA’s assessment relating to the distinctive and dominant elements of the signs at issue.
The global assessment of the likelihood of confusion
The Court noted that, according to case law, the assessment of the likelihood of confusion depends on numerous factors, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character.
However, the applicant’s reference to the evidence provided to the BoA was too vague, and thus failed to prove the claimed acquired distinctiveness through use. Even if the earlier marks, including the earlier mark ‘AC’, had an enhanced distinctiveness acquired through use and therefore enjoyed broader protection, the fact remained that, in view of the low degree of visual and phonetic similarity between the signs at issue and, above all, their conceptual dissimilarity, the BoA was right in finding that there was no likelihood of confusion.
Therefore, in the context of an overall assessment of the signs at issue, the elements that differentiate those signs visually, phonetically and conceptually - namely the predominance of the figurative element of the sign applied for, the structure of that sign and the logical unit formed by its word and figurative elements considered as a whole - were sufficient for it to be found that, when faced with the signs at issue, the relevant public would not make a connection between them. This is because those factors as a whole create a genuine dichotomy visually, phonetically, and conceptually between the signs at issue. In those circumstances, despite the presumed identity of the services in question, consumers will not regard those services as coming from the undertaking which is the proprietor of the earlier marks or from an undertaking that is economically linked to that undertaking.
In light of these considerations, the Court dismissed the applicant’s action in its entirety, and ordered Marriott to pay the costs.
