In Smiley Miley v EUIPO (T-368/20), the General Court has annulled a decision of the EUIPO in which it had upheld an opposition to the registration of the MILEY CYRUS word mark.
A Miley Cyrus company, Smiley Miley, Inc. applied to register the mark MILEY CYRUS as an EU trade mark in Classes 9, 16, 28 and 41 for a variety of products including video recordings, DVDs and entertainment services. A BVI company, Cyrus Trademarks Limited, opposed the application on the basis of its earlier EU registered trade mark above left for the stylised CYRUS in Classes 9 and 20 claiming there was a likelihood of confusion.
The Opposition Division agreed in part, rejecting a large number of the goods and services covered by the application. On appeal, the Board of Appeal agreed with the Opposition Division and found there was a likelihood of confusion on the basis the goods and services in question were identical or similar, the signs were visually and phonetically similar to an average degree and the conceptual comparison was neutral. Smiley Miley, Inc. appealed to the General Court.
The Board of Appeal had found that the word CYRUS was the more dominant part of the mark MILEY CYRUS. It claimed that consumers remember a surname rather than a first name in marks composed of a first name and a surname. The applicant disagreed and this view was shared by the General Court. The Court said it is possible in part of the EU for surnames to have a more distinctive character than first names but each case had to be considered on its own facts. It was agreed that neither "MILEY" nor "CYRUS" was a common first name or surname. It also noted that the mark MILEY CYRUS refers to the first name and surname of the famous singer and actress. The evidence submitted showed that she is known by her first name and surname together and not separately by her first name nor her surname. The General Court therefore found that the elements MILEY and CYRUS were equally distinctive and neither was dominant.
Considering the two signs, the General Court agreed with the Board of Appeal that they were of average visual similarity given the later mark contained the identical distinctive word "CYRUS". It also agreed that the marks were of average phonetic similarity.
Turning to the conceptual comparison, the General Court stated that Miley Cyrus had an international reputation "known to most well-informed, reasonably observant and circumspect persons" and that the relevant public would see the application as designating her name. The General Court stated that the Board of Appeal should have found on the basis of its own findings that a conceptual association would be made between the Applicant's mark and the name of Miley Cyrus. The Applicant's mark therefore did have a conceptual meaning.
The General Court did not agree that the relevant public would see the earlier mark as a short version of the full name Miley Cyrus as the evidence did not show that she was known by her surname alone. According to the evidence, Miley Cyrus has never used the name Cyrus on its own in the course of her career.
The conceptual differences between the marks therefore counter-acted the phonetic and visual similarities. The reputation of Miley Cyrus was such that on seeing the Applicant's mark, the relevant public would see it as referring to her name. Given its finding that the marks were different, the General Court did not need to go on to consider how similar the goods or services were.
The opposition was therefore rejected and the application allowed to proceed to registration.
The case shows that in an application for a first name and a surname, the concept that the surname is instinctively the dominant part of that mark is incorrect. Each case should be decided on its own facts. Factors to be taken into account include how common the first name and the surname are and if the applicant is known by their first name and surname taken together.
This case is also reminiscent of the long-running trade mark dispute (referred to in this ruling) concerning the football megastar, Lionel Messi, who had applied to register a logo featuring his name, MESSI, for sporting equipment and clothing, but had been opposed by the owner of the earlier MASSI registration. Ultimately, the CJEU ruled that there was no likelihood of confusion between MASSI and MESSI and that the reputation of a person applying for their name to be registered as a trade mark was relevant (see here for our previous blogs, 'He scores again – the MESSI trade mark dispute ends in extra time').
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