17/06/2021
Smiley Miley, Inc. (‘SMI’), the company owned by American singer Miley Cyrus, has won a six year legal battle to register the trade mark MILEY CYRUS in the EU. The General Court of the European Union (‘the GC’) issued its decisions on 16 June 2021, overturning the refusal of this trade mark application by the EU Intellectual Property Office (‘the EUIPO’).
When a celebrity applies to register their name as a trade mark and this application is opposed, the fact that the mark is the name of a famous person can lead to a finding of conceptual dissimilarity with the earlier mark – even when the earlier mark is wholly reproduced as the famous person’s surname. The GC held that the EUIPO Board of Appeal were wrong not to take this into account.
The first instance and appeal decisions
The MILEY CYRUS mark was applied for in respect of music and video recordings, computer equipment, audio equipment, video game equipment, women’s apparel, live entertainment services and other related goods and services.
The application was opposed by Cyrus Trademarks Ltd on the grounds that there is a likelihood of confusion amongst the relevant public in respect of its earlier EU trade mark registration for the stylised CYRUS mark shown below, which is registered for various types of audio equipment and related software:
Cyrus Trademarks Ltd is a company registered in the British Virgin Islands and connected to Cyrus Audio, a manufacturer of audio equipment.
The opposition was upheld for most of the goods and services that were applied for. The EUIPO found that these goods and services were identical or similar, that the marks were similar on visual and phonetic level – and importantly, that the conceptual comparison of the marks was neutral (i.e. there was no similarity or dissimilarity).
When assessing whether there is a likelihood of confusion, part of the EUIPO’s assessment is to consider which part of the marks is dominant and will grab consumers’ attention. It held that the MILEY CYRUS mark was dominated by the second word CYRUS, which corresponds to the entire verbal element of the earlier mark. Ultimately, the EUIPO concluded that there was a likelihood of confusion between the marks.
The EUIPO’s decision was appealed to the Boards of Appeal, who reached the same conclusion and upheld the finding of a likelihood of confusion. SMI appealed the Boards of Appeal’s decision further up to the GC.
The General Court decision
The GC’s decision turned on the assessment of the distinctive and dominant elements of the MILEY CYRUS mark, and on the conceptual comparison between this mark and the earlier stylised CYRUS mark.
Distinctive and dominant parts of the mark
In its earlier decision, the Board of Appeal found that the mark MILEY CYRUS would be understood by consumers as a personal name. It held that surnames, as opposed to first names, have “higher intrinsic value” as trade marks, referencing case law which states that people are more frequently referred to by their surname than their first name.
The GC considered this reasoning to be flawed. The perception of a mark varies from country to country in the EU, and this includes the relative weight given to a surname versus a first name. In fact, the earlier case that the Board of Appeal relied on to support its reasoning concerned only the perception of the Spanish consumer – which is inconsistent with the Board of Appeal’s focus on the perspective of the English speaking consumer when assessing the MILEY CYRUS mark.
The GC remarked that the EUIPO’s general experience had led to the rule that surname a ‘[first name]-[surname]’ mark retains a higher distinctive role, but this does not mean it should be applied automatically without taking into account the specific features of each case. One such specific feature is whether the person seeking to register their full name as a trade mark is famous.
On this point, the GC held that the Board of Appeal was mistaken to find that the surname CYRUS has a greater degree of distinctiveness than the first name MILEY in the contested mark. The two elements are equally distinctive, neither one is not dominant in relation to the other. In reaching this conclusion the GC noted that Miley Cyrus is in fact known by her first name and surname taken together.
Visual and phonetic similarity
The Board of Appeal had held that the marks were visually and phonetically similar to an average degree, on account of the shared word CYRUS. The additional word MILEY in the contested mark, and the stylised font of the earlier mark, were not significant enough to offset this similarity.
Although the surname CYRUS does not have a higher degree of distinctiveness in the mark, as the second word in a two-word mark it does play an ‘independent distinctive role’. With this point in mind, the Board of Appeal held that when a separate element (i.e. MILEY) is added to a distinctive one-word mark (i.e. CYRUS) in such a way that the common element retains its independent distinctive role, then the marks are similar. This is a standard application of the law on this point and the GC held that the Board of Appeal were correct in their assessment of the degree of visual and phonetic similarity.
Conceptual differences
In a technical assessment of the conceptual similarity between the marks, the Board of Appeal found that the mark MILEY CYRUS has no meaning. This is an example of the algorithmic process through which the EUIPO compare marks. The starting point is to assume that a mark is prima face meaningless, and then only ascribe a conceptual meaning to word or combination of words if this is self-evident. As a result, the Board of Appeal concluded that “there exists no such thing as a ‘MILEY’, a ‘CYRUS’ or even a ‘MILEY CYRUS’”.
The prima face meaninglessness of a mark can be overcome by a finding, for example, that the mark is in fact known amongst the relevant public as the name of a celebrity. And this is the argument put forward by SMI, with reference to prominent EU case law on conceptual meaning (which also happens to deal specifically with trade marks of famous names) including the PICASSO and MESSI cases.
The argument put forward is that the relevant public will understand the mark MILEY CYRUS as referring to the famous singer, and that this meaning is distinct from the meaning of the earlier mark CYRUS. The result is a clear conceptual difference between the marks.
The only evidence filed by SMI to support this claim is described in the Board of Appeal’s decision as “several screenshots of internet webpages and screenshots of Miley Cyrus’ social media channels”. This does not amount to incontrovertible evidence of ‘reputation’ (in a trade mark sense) by any stretch of the imagination, but the strength of this evidence was not assessed in any detail by the Board of Appeal.
Instead, the Board of Appeal dismissed the whole argument by stating that any enhanced distinctiveness or reputation of the MILEY CYRUS mark was irrelevant. For the purposes of an opposition based on an earlier EU registration, events or facts that happened before the filing of the contested application are irrelevant, because the EU registration gives the Opponent enforceable rights that pre-date the application.
However, when reaching this conclusion the Board of Appeal did make a statement of fact, conceding that Miley Cyrus’ name was well known and that this would influence the perception of the relevant public.
When the GC reached its decision on the conceptual similarity between the marks, it noted first of all that it was not in dispute that Miley Cyrus is a “public figure of international reputation known to most well-informed, reasonably observant and circumspect persons”. This much had been admitted by the Board of Appeal. According to the GC, the Board of Appeal should have concluded on the basis of its own findings that the relevant public was likely to make a conceptual association between the mark MILEY CYRUS and the name of the famous singer.
It is important to note that the finding that Miley Cyrus (the person, not the trade mark) is famous was not explicitly reliant on evidence filed by SMI, but was a statement of fact made by the Board of Appeal and that the GC had no reason not to rely on.
Turning to the Board of Appeal’s reasons for finding that MILEY CYRUS has no meaning, the GC held that in cases where a person’s name has become well known because of the celebrity of that person, the name / mark (i.e. MILEY CYRUS) has become a symbol for the concept (i.e. the singer, Miley Cyrus). The Board of Appeal’s ‘no such thing as a Miley’ argument did not hold up. And it was apparent from the undisputed fame of Miley Cyrus that the relevant public would in fact perceive a conceptual meaning in the mark MILEY CYRUS.
Defending its position in front of the GC, the EUIPO stated that ‘Miley’ is not a common first name and ‘Cyrus’ is not a common surname in the EU. This implies that the relevant public who would identify the mark MILEY CYRUS with the singer would likely perceive the mark CYRUS as a shortened version of the full name, and that the earlier mark CYRUS would also identify the singer Miley Cyrus. If the marks are not conceptually neutral, as the Board of Appeal had initially held, then they are more likely to be conceptually similar than different. This logic, the EUIPO argued, clearly distinguishes the present case from the PICASSO and MESSI cases.
On the issue of whether the earlier mark CYRUS would carry the same conceptual meaning, the GC held that the fact that ‘Cyrus’ is not a common name in the EU does not allow this inference to be made. The Board of Appeal had even conceded that Miley Cyrus markets herself and performs onstage using her first name and surname taken together – and no evidence had been filed to show that she had ever referred to herself by her surname alone throughout the course of her career.
The GC instead found that the earlier mark CYRUS had no specific conceptual meaning for the relevant public, and that there was indeed a conceptual difference between the marks.
Referring to the PICASSO and MESSI cases, the GC reiterated that conceptual differences between two marks can, in certain circumstances, counteract visual and phonetic similarities between them. For this to happen the relevant public needs to immediately grasp a clear and specific meaning when encountering one of the marks.
This was held to be the case with MILEY CYRUS. The mark has a clear and specific meaning that can be immediately grasped by the relevant public, enabling them to distinguish it from the earlier mark. This fact allowed the GC to find that the marks were dissimilar overall, notwithstanding the visual and phonetic similarities between them.
When the marks are dissimilar, there can be no likelihood of confusion. The Board of Appeal’s decision was overturned. Unless the EUIPO or Cyrus Trademarks Ltd decide to appeal the GC’s decision up to the Courts of Justice of the European Union, the MILEY CYRUS mark will soon be registered in the EU.
In general, when a later mark wholly contains an earlier mark (and the earlier one does not make up an insignificant part of the later one) the EUIPO and the courts are likely to find that the marks are similar. But this decision reiterates the important role that can be played by strong conceptual dissimilarities between marks. It is one more in a growing list of cases where the fame of a name removes the legal similarity between that name-as-a-trade-mark and another visually and phonetically similar trade mark.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
