What sounds like a sporting contest between two rival soccer clubs from the north of Italy concerns a dispute under trademark law between the soccer club AC Milan and the manufacturer of stationery InterES Handels- und Dienstleistungs-Gesellschaft mbH & Co. KG.

In February 2017, the soccer club AC Milan (or AC Milan) filed an EU trademark application with the European Union Intellectual Property Office (EUIPO) for the word and figurative mark "AC Milan," which was also registered for, among other things, paper and stationery products in Class 16.

The German stationery manufacturer InterES Handels- und Dienstleistungs-Gesellschaft mbH & Co. KG filed an opposition on the grounds of likelihood of confusion under Art. 8 (1)(b) UMV from its German word mark "MILAN", which had already been registered since 1984. This opposition was successful and also withstood the subsequent appeal of AC Milan before the Boards of Appeal of the EUIPO.

AC Milan appealed against this decision before the European Court - in vain, because the European Court confirmed the decision of the Board of Appeal that the word and figurative mark "AC Milan" was not registrable due to the likelihood of confusion under Art. 8 (1)(b) UMV on the basis of the earlier German word mark "MILAN".

In this regard, the court not only considered the earlier mark to have been sufficiently put to genuine use, but also found that the earlier mark had been sufficiently used in its registered form. Furthermore, the court considered the element "AC MILAN" to be the dominant element of the younger mark and finally concluded that there was a likelihood of confusion due to the strong phonetic similarity as well as the at least medium visual similarity of the signs in question with regard to the same goods and services.