AC Milan losing trade mark case, and news from the Copyright Directive

MILAN – AC MILAN

This week, the General Court, ruled against the Italian football club “Associazione Calcio Milan SpA (AC Milan)”.

In 2017, AC Milan sought for an international registration, designating the European Union, of its figurative sign, for products included in class 16 of the Nice Agreement, consisting in office equipment and stationery items.  

An opposition was filed before the EUIPO, by the German company– paradoxically called - InterES Handels- und Dienstleistungs Gesellschaftmotivated, in the light of the existence of the previous registered German trade mark “Milan”, for similar goods in class 16. The company invoked the existence of a risk of confusion between both marks, as stated in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

Both the opposition division of the EUIPO and the Boards of Appeal, considered that there was a likelihood of confusion. As these decisions were not favorable to AC Milan’s requests, an appeal was lodged before the General Court.

The General Court, concluded that from a visual perspective, the word element “AC Milan” will be considered by the relevant public the dominant element of the mark and consequently, the figurative element will not attract the public’s attention, as much as the word element, meaning lack of distinctiveness.

The phonetical comparison concluded that the similarity between both marks is high, only differing form the verbal element “AC”.

Moreover, even if the connotation of the word Milan has different meanings (name of the Italian city, name of the football team of the mentioned city, male’s name and species of bird of pray), the conceptual similarity between both signs is high too for a relevant public.  

It has been proved that the previous trade mark “Milan” was already used genuinely and effectively all over the German territory.

Taking into consideration that the high degree of similarity between both signs at a phonetical level, as well as the similarity between goods, the overall assessment established there was a likelihood of confusion on the relevant public.

This case proved that even large companies may fail to register their trade marks against smaller national brands.

Italy and Spain transpose the DSM Directive

Italy and Spain have transposed into their own national law, the Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC (from now onwards, the DSM Directive).

The DSM Directive aimed to adapt authors’ rights to the digital environment, creating a fair balance between authors’ rights and the new internet service providers.

In the first place, it is important to mention a new right has been granted to press publishers to enhance the protection of press publications in online environments, as recognised in article 15. This article establishes a regulation for ISSPs for the reproduction of an extract of a press publication.

In the case of Italy, the Information Society Service Providers (ISSPs) and the press publishers are now forced to negotiate a licensing agreement and in the event that an agreement can’t be reached, are bound to a fair compensation clause.

Article 17 of the Directive establishes that Online Content Sharing Service Providers (OCSSPs), such as Google news or Facebook, shall obtain the authorisation directly from the individual rightholder of from publishers’ associations. As far as Spain is concerned, the transposition of this article will put an end to the collective licensing fee, reason why Google News stopped its activity in the country in 2014. The DSM Directive establishes an obligation to share revenues with publishers.

Finally, new limitations to the exclusive authors’ rights have been foreseen in the field of scientific research, text and data mining, in favour of research organisations and cultural heritage institutions. In addition to this, another exception is foreseen for teaching purposes, in order to allow the use of protected works in educational institutions. You can read more about the DSM Directive in our Fact Sheet on this topic.