Ready, Set, Don’t Go: “MILEY CYRUS” trade mark is confusingly similar to earlier “CYRUS” trade mark
On 21 April 2014, Smiley Miley Inc. (“Smiley”), Miley Cyrus’ company, applied for the EU word trademark “MILEY CYRUS”, under number 012807111, indicating several services in classes 9, 16, 28 and 41, relating to all sorts of music, entertainment, media and merchandising related goods and services.
On 11 September 2014, Cyrus Trademarks Ltd (“Cyrus TM”) filed an opposition, claiming there would be a likelihood of confusion, on the basis of its earlier EU figurative trademark, filed on 15 June 2010, and registered on 29 November 2010, under number 9176306, indicating music and audio related goods in classes 9 and 20:
On 30 October 2018, the Opposition Division of the European Union Intellectual Property Office (“EUIPO”, being the administration responsible for managing the EU trade marks and the registered Community designs) (partially) upheld the opposition, finding a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 2017/1001 on the European Union trademark. This article provides that an EU trademark application will not be registered if it is opposed by the holder of an earlier trademark, if there is a likelihood of confusion by the public, caused by the similarity between the signs (and goods or services) covered by the trademarks. The Fourth Board of Appeal of the EUIPO (BoA) confirmed the Opposition Division’s decision on 2 April 2020.
The General Court came in like a wrecking ball: Miley Cyrus is a public figure of international reputation and so the signs are different
Smiley appealed the BoA’s decision to the General Court of the European Union. The General Court analysed whether the BoA had correctly considered if this “MILEY CYRUS” trademark could cause a likelihood of confusion with the earlier “CYRUS” trademark (judgment of 16 June 2021, T-368/20).
First, the General Court restated its prior and settled case law, setting out that a likelihood of confusion requires that two conditions are fulfilled: (i) the signs are identical or similar, and (ii) the goods or services covered are identical or similar. When assessing the similarity of the signs, a global assessment should be made on the basis of the visual, phonetic or conceptual similarity of the signs.
The distinctive word element of the earlier “CYRUS” mark is fully contained in Smiley’s trade mark, to which the “MILEY” element is added. On this basis, the General Court determined that the BoA had correctly found, that there is an average similarity between the signs, both visually and phonetically.
As regards the conceptual comparison, the BoA had decided that the fact that Smiley’s trademark corresponded to the name of the famous singer could not be understood as this sign having a conceptual ‘meaning’ and that would be different to the conceptual meaning of the opposing trademark. Furthermore, the first name, as well as the surname would be uncommon, so that the surname alone would be perceived as the short version of the full name, identifying the same person. According to the BoA, the conceptual comparison would thus be neutral. Combined with the visual and phonetic similarities, the signs should be regarded as similar overall and a likelihood of confusion would be present.
The General Court, however, has disagreed. First, it has noted in point 51 of its judgment:
“since Miley Cyrus is a public figure of international reputation known to most well-informed, reasonably observant and circumspect persons who read the press, watch television, go to the cinema or listen to the radio, where they can see her or listen to her sing or where she is regularly spoken of, it follows that the relevant public will understand the mark applied for as designating the name of the famous American singer and actress” (emphasis added).
The General Court has noted that a conceptual comparison remains possible if the first name or the surname (such as “MILEY CYRUS”) has become the symbol of a concept, due to the celebrity of the person carrying that name, which is the case here. As a consequence, the BoA should have concluded that the public would make a conceptual association between the “MILEY CYRUS” sign and the name of the famous American singer and actress.
Second, the fact that the “Cyrus” name is not a common surname does not mean that the public would perceive “Cyrus” (the verbal element of Cyrus TM’s opposing trademark) as the short version of the full name “Miley Cyrus”. The fact that Miley Cyrus is well-known, results from the first name and surname taken together. The public would not perceive “Cyrus” as a reference to “Miley Cyrus”.
The General Court has concluded that the two signs are conceptually different and that this difference counteracts the phonetic and visual similarities:
“The mark applied for, MILEY CYRUS, has a clear and specific semantic content for the relevant public given that it refers to a public figure of international reputation, known by most well-informed, reasonably observant and circumspect persons, (…) whereas the earlier mark has no particular semantic meaning” (point 61 of the judgment).
Hence, according to the General Court, there is no likelihood of confusion and “Miley Cyrus” can be registered as a valid trademark.
Conclusion: strong protection for public figures of international reputation
This General Court decision is very similar to its earlier decision regarding the trade mark application for the “MESSI” sign, introduced by Lionel Messi, in the context of an opposition on the basis of an alleged likelihood of confusion with the earlier trade mark “MASSI” (Judgment of the General Court of 26 April 2018, T-544/14, in which the appeal before the Court of Justice of the European Union was dismissed: judgment of 17 September 2020, C-449/18 P and C-474/18 P). In that case, discussed in a prior blog post, the General Court concluded that the conceptual difference (“Messi” refers to the world-famous footballer and “Massi” has no specific meaning) counteracted the visual and phonetic similarities, so that the signs were different overall. As such, there was no likelihood of confusion.
The General Court’s Miley Cyrus and Messi decisions demonstrate that any public figure of international reputation should be able to register their name as a trademark, even in situations where visually and phonetically similar trademarks might exist.
The EUIPO could still appeal the General Court’s judgment regarding “MILEY CYRUS” to the Court of Justice, but only on points of law. Furthermore, since 1 May 2019, the Court of Justice will only allow such an appeal where it raises an issue that is significant regarding the unity, consistency or development of Union law. As such, it is not certain EUIPO will be able to have the General Court’s judgment overturned.