Inter Milan score off the field – Trade mark protection

inter milan
16 Jun 2020

As we are all too well aware, the sporting world has not outrun the COVID-19 pandemic. Weekends usually spent immersed in live sporting action are now occupied with replays of iconic sporting moments as we long for the action to return our screens. However, Inter Milan continue to score off the field, as they seek to protect and defend their INTER brand and trade mark that many football fans associate with the team itself.

Our live action during lockdown comes courtesy of ongoing trade mark opposition proceedings in the US, where the United States Patent and Trade Mark Office (USPTO) recently dismissed one of the two arguments relied upon by the US topflight football league, Major League Soccer (“MLS”) in its trade mark opposition lodged on 25 March 2019 against Inter Milan’s ‘INTER’ trade mark application in the US.

Unlike most professional football leagues around the world, MLS owns the intellectual property and trade mark rights of the entire 25 team roster competing in the league, which they regulate through franchise agreements with the individual teams. Inter Milan’s INTER trade mark application has been cited as a bar in MLS’ attempts to register trademarks such as INTER MIAMI FC and INTER MIAMI, the nickname for the newest MLS team- CLUB INTERNATIONAL DE FÚTBOL MIAMI MMXX. Ironically, Inter Miami is partly owned by the suave David Beckham who famously lined-up for Inter Milan’s bitter rival AC Milan in his playing days.

MLS’ argument in the trade mark opposition proceedings is two-pronged:

  1. It alleges that as per Section 2(e) of the Trademark Act, 15 U.S.C. § 1052(e) that INTER is short for internacional (which translates to ‘international’), and is thus merely descriptive, and not distinctive of Inter Milan as several football clubs around the world incorporate INTER as a part of their team name. As such, Inter Milan cannot claim exclusive rights in and to the INTER mark; and
  2. They also raised an argument based on Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) where MLS claims priority rights in and to the INTER mark in the US, and whereby they cite third-party football teams that incorporate INTER as part of their team names as evidence of use that would likely lead to confusion should Inter Milan’s INTER trade mark make it through to registration. After Inter Milan filed a partial motion to dismiss, the USPTO dismissed the claim as MLS failed to sufficiently claim valid prior proprietary rights that preceded those of Inter Milan’s.

These provisions in the US are to an extent similar to Sections 10(2)(a), 10(2)(c) and 10(12) of the South African Trade Marks Act which reads:

10 Unregistrable trade marks:

The following marks shall not be registered as trade marks or, if registered, shall, subject to the provisions of sections 3 and 70, be liable to be removed from the register:

…(2) a mark which-

is not capable of distinguishing within the meaning of section 9; or
…(c) consists exclusively of a sign or an indication which has become customary in the current language or in the bona fide and established practices of the trade; and

…(12) a mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion….…

Inter Milan, in their answer to MLS’ Notice of Opposition deny MLS’ assertions above and reiterate that the INTER mark is inherently distinctive or has acquired a secondary meaning through use. The writer believes there is merit in this defence, as INTER has become a household name around the world when referring to the Italian Giants. Football fanatics automatically and without thinking affiliate the INTER mark with the club Inter Milan.

The proviso to Section 10 of the South African Trade Marks Act makes provision to protect marks that have gained a secondary meaning and distinctiveness through use that would otherwise be objectionable on the basis that they lack distinctiveness. It states as follows:

Provided that a mark shall not be refused registration by virtue of the provisions of paragraph (2) or, if registered, shall not be liable to be removed from the register by virtue of the said provisions if at the date of the application for registration or at the date of an application for removal from the register, as the case may be, it has in fact become capable of distinguishing within the meaning of section 9 as a result of use made of the mark

Whilst trade mark laws are jurisdictional, like the beautiful game of football there are often common rules applied beyond borders when it comes to interpretation of trade mark law principles. Following the successful Partial Motion to Dismiss in Inter Milan’s favour, the question now remains, will Inter Milan continue to score off the field in successfully defending its iconic INTER brand and trade mark.

See also:

(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)
Michael Marki

Michael Marki is a candidate attorney at KISCH IP's trade mark department. His qualifications include: BSc Genetics & Biochemistry (University of Pretoria) LL B (University of the Witwatersrand) Read more about Michael Marki


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