September 27, 2021
In April 2014, Smiley Miley Inc applied to register the word sign MILEY CYRUS as an EU trade mark in Classes 9 (e.g., “Musical sound recordings; musical video recordings”), 16 (e.g., “Printed material”), 28 (e.g., game controllers for computer games”) and 41 (e.g., “Entertainment services”).
In September 2014, Cyrus Trademarks Ltd opposed the application on the basis of its earlier EU figurative mark, which was registered in November 2010 in Classes 9 (e.g., “Apparatus and instruments all transmitting, receiving, recording and reproducing audio and visual signals”) and 20 (e.g., “Audio racks (furniture) for use with audio, visual and audio-visual equipment”):
Cyrus Trademarks claimed that MILEY CYRUS was confusingly similar to its earlier mark pursuant to Article 8(1)(b) of the Trade Mark Regulation (207/2009/EC).
The Opposition Division of EUIPO partially upheld the opposition, finding that there was a likelihood of confusion in relation to most of the goods and services covered by the application mark. The Fourth Board of Appeal dismissed Cyrus Trademarks’ appeal, holding that the level of attention of the relevant public varied from average to high, that the goods and services in question were identical or similar, that the signs were visually and phonetically similar to an average degree and that the conceptual comparison was neutral.
Cyrus Trademarks appealed to the General Court.
The relevant public
The GC said that although the relevant territory in this case was the whole of the EU, it was open to the BoA to confine itself to considering the perception of the English-speaking part of the relevant public in the EU since according to case law it is sufficient to show a likelihood of confusion in part of the EU.
The BoA had found that the “miley” element of the mark was less dominant than “cyrus” because of its position in the composite mark and because surnames generally have a “higher intrinsic value” as indicators of origin.
The GC said that, although this latter point was true for some Member States, the specific factors of the case also had to be considered, in particular, whether the surname is unusual or very common and whether the person in question is well known. A surname will not necessarily be perceived as independently distinctive simply because it is a surname, it said.
The BoA had not referred to any evidence showing that the English-speaking countries of the EU generally ascribed greater distinctiveness to surnames rather than to first names. Further, it was not in dispute that both the name, Miley, and the surname, Cyrus, were not common names. MILEY CYRUS referred to a famous singer and actor who was known by her first name and surname taken together and not by either of them separately. Therefore, the GC said, the two elements of the application mark were equally distinctive, and neither was more dominant than the other. The BoA had been wrong to find that “miley” would be perceived as less dominant than “cyrus”.
Visual and phonetic comparison
The BoA had found that the visual and phonetic similarities between the marks were average, due to the “cyrus” element.
Cyrus Trademarks argued that the visual similarity was only minimal. The GC disagreed, finding that the BoA had been correct to find that the addition of “miley” in the application mark and the figurative elements of the earlier mark were not enough to offset the similarity rendered by “cyrus”.
The GC also rejected Cyrus Trademark’s argument that consumers generally attach more importance to the beginning of words and would therefore pay more attention to “miley” than to “cyrus”, making the phonetic similarity between the marks minimal. The GC said that this did not always apply and here, “miley” included the same number of syllables as “cyrus”, meaning that the relevant consumer would not attach more importance to one word rather than the other.
Cyrus Trademarks argued that the BoA, in recognising that it was possible for the relevant public to perceive “miley cyrus” as referring to the famous singer, should have concluded that the application mark had a clear meaning, distinct from that of the earlier mark, and that there was therefore a conceptual difference between them.
The GC noted that where a first name or surname has become the symbol of a concept, due, for example, to the celebrity of the person concerned, or where either name has a clear and immediately recognisable semantic content, a conceptual comparison can be made.
The BoA should have concluded, therefore, based on its own findings, that the relevant public was likely to make a conceptual association between the words “miley cyrus” and the name of the famous singer.
The BoA had also been wrong to conclude that MILEY CYRUS had no conceptual meaning as there was no such thing as a Miley, a Cyrus or a Miley Cyrus. That was irrelevant, the GC said, since the name Miley Cyrus had become the symbol of a concept due to the celebrity of the person behind the name.
Further, the fact that the name Cyrus was not a common surname did not necessarily show that the relevant public would perceive it as the short version of the full name Miley Cyrus. Miley Cyrus marketed herself using both names together and was not known by her surname alone. Accordingly, the relevant public would not perceive the word “cyrus” as referring to the celebrity. The earlier mark therefore had no semantic meaning for the relevant public.
The GC concluded that the marks were conceptually different. This conceptual difference counteracted any phonetic and visual similarities between the signs, as the relevant public would immediately understand the meaning of MILEY CYRUS. Further, the reputation of Miley Cyrus was such that the relevant public would not perceive the mark MILEY CYRUS, when used in connection with the goods and services in question, as just a mark among other marks for such goods and services
There was no likelihood of confusion under Article 8(1)(b) and the BoA’s decision was annulled. (T-368/20 Smiley Miley Inc v EUIPO EU:T:2021:372 (16 June 2021) — to read the judgment in full, click here).