The General Court of the European Union has ruled in case T‑368/20 Smiley Miley, Inc. v Cyrus Trademarks Ltd. This dispute started with a European trademark application for MILEY CYRUS in classes 9, 16, 28, 41 filed by Smiley Miley Inc. , a company owned by the famous pop singer Miley Cyrus.
Against this application an opposition was filed by Cyrus Trademarks Ltd based on the following earlier trademark for classes 9 and 20:
The EUIPO upheld partially the opposition concluding that both signs are confusingly similar. The reason for this was the fact that Cyrus was not common name and can be perceived as a short name for Miley Cyrus. In addition, earlier mark was included in its entirety in the later one with the presence of similar goods and services.
The decision was appealed.
The General Court disagreed with EUIPO and overturned the decision. According to the Court every mark has to be assessed in its entirety. From that perspective it is highly likely most of people to associate the mark applied for with the famous singer due to her global reputation.
Accordingly, the Board of Appeal erred in finding that the name of the famous American singer and actress, Miley Cyrus, of which the mark applied for consists, has no conceptual meaning.
As regards, next, the earlier mark CYRUS, it must be held that, contrary to what EUIPO claims, the fact that the name Cyrus is not a common surname does not necessarily support the inference, in the present case, that the relevant public will perceive that surname alone as the short version of the full name Miley Cyrus, thus identifying the same person. As has been stated in paragraph 37 above, Miley Cyrus markets her activities and performs on stage using her first name and surname taken together. By contrast, it has been neither suggested nor demonstrated that she has been known as a singer or actress by her surname alone. It is thus apparent that the fact that Miley Cyrus is well known, as a singer and actress, results from her first name and surname taken together, and not from her surname alone. Accordingly, the mere fact that that name is not common does not support the inference that the relevant public will perceive the word ‘cyrus’, taken alone, as referring to the famous singer and actress Miley Cyrus, who, according to the evidence before the Court, has specifically never used the name Cyrus in isolation in the course of her career. It must therefore be held that the earlier mark has no particular semantic meaning for the relevant public.
It thus follows from the foregoing considerations that the applicant is correct in claiming that the marks at issue are conceptually different and that the Board of Appeal erred in finding that the conceptual comparison was neutral.
That is the case here. 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, as has been pointed out in paragraph 51 above, whereas the earlier mark has no particular semantic meaning. Furthermore, the reputation of the singer and actress Miley Cyrus is such that it is not plausible to consider that, in the absence of specific evidence to the contrary, the average consumer, confronted with the mark MILEY CYRUS designating the goods and services in question, will disregard the meaning of that sign as referring to the name of the famous singer and actress and perceive it principally as a mark, among other marks, of such goods and services (see, to that effect, judgment of 17 September 2020, EUIPO v Messi Cuccittini, C‑449/18 P and C‑474/18 P, not published, EU:C:2020:722, paragraph 36).
It follows that the conceptual differences existing in the present case between the marks at issue are such as to counteract the visual and phonetic similarities set out.
This is another decision of the European Court that gives priority to the reputation of a celebrity in case of trademark similarity assessment. Recently there was a similar case with Lionel Messi and his European trademark.
INTELLECTUAL PROPERTY PLANET 