On 16 June 2021 the General Court issued its decision in Smiley Miley Inc v European Union Intellectual Property Office (EUIPO) (Case T‑368/20).
In 2014 Smiley Miley Inc – a company of world-famous artist Miley Cyrus – filed an application with the EUIPO for the registration of MILEY CYRUS as an EU trademark for goods and services in Classes 9, 16, 28 and 41.
Cyrus Trademarks Ltd opposed the application on the ground that it was confusing similar with the earlier EU trademark depicted below for goods in Classes 9 and 20:
In 2018 the EUIPO accepted the opposition in part on the ground that there was a likelihood of confusion between the mark applied for and the earlier mark in respect of most of the goods and services covered by the mark MILEY CYRUS.
That same year, the EUIPO dismissed an appeal filed by Smiley Miley, finding that the signs at issue were visually and phonetically similar to an average degree and that the conceptual comparison was neutral. Smiley Miley lodged an appeal with the General Court.
Having conducted an in-depth analysis of the case, the General Court annulled the EUIPO’s decision, thus granting the EU trademark MILEY CYRUS.
The General Court focused its decision on two main issues.
First, the court addressed the alleged error made by EUIPO when finding that the element ‘Miley’ (first name) in the mark applied for would be perceived as a less dominant element in comparison with the element ‘Cyrus’ (surname).
The court held that, although there is case law indicating that surnames have, as a general rule, a more distinctive character than first names, it is necessary, however,
to take account of factors specific to the case and, in particular, of the fact that the surname concerned is unusual […], which is likely to have an effect on that distinctive character […] and to take account of whether the person who requests that his or her first name and surname, taken together, be registered as a trademark is well known […].
Bearing in mind that (i) neither ‘Miley’ nor ‘Cyrus’ is a common first name or surname; (ii) the mark applied for refers to the first name and surname of a world-famous artist; and (iii) the artist is known by that first name and that surname taken together, the court stated that those two elements were equally distinctive.
Second, the court held that the EUIPO committed an error when comparing the signs conceptually and considering that the name of the reputed artist Miley Cyrus had no conceptual meaning.
The court underlined that:
a conceptual comparison remains possible where the first name or the surname in question has become the symbol of a concept, due to, for example, the celebrity of the person carrying that first name or surname […].
The well-known character of the American singer and actress meant that it was highly unlikely that consumers would not associate the mark MILEY CYRUS with the name of the artist.
Consequently, the court concluded that, although the marks were similar, the conceptual differences between them were such as to counteract the visual and phonetic similarities.
The judgment confirms, on the one hand, that names and surnames may have a conceptual meaning and, on the other, the possibility of ‘neutralising’ any visual and phonetic similarities where it is established that the relevant public assigns to one of the signs a clear and specific meaning that can be grasped immediately.
Considering that the courts have followed this same line over the past few years, the decision does not represent a turning point in case law. Nevertheless, it reinforces the protection enjoyed by celebrities through the registration of trademarks, bearing in mind their reputation and worldwide recognition as a result of appearances in the media.
This article first appeared on WTR Daily, part of World Trademark Review, in june, 2021. For further information, please go to www.worldtrademarkreview.com.
Author: Soledad Bernal
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