Miley Cyrus versus Cyrus: no likelihood of confusion!

Miley Cyrus versus Cyrus: no likelihood of confusion the European Court (CJEU) ruled – unlike the previous instances in the EUIPO, which found a likelihood of confusion. The fame of the singer Miley Cyrus was decisive today – and had not been taken into account by the EUIPO.

Miley Cyrus versus Cyrus: Likelihood of confusion?

The case decided today by the ECJ concerned the American songwriter and singer Miley Cyrus – and the likelihood of confusion between the earlier trade mark “Cyrus” and the later trade mark registration “Miley Cyrus” – the latter applied for by Smiley Miley, Inc. (USA), which was also the applicant in today’s proceedings. In short: good things come to those who wait – at least from Miley Cyrus’ point of view.

Applicant and trademark applicant: Smiley Miley Inc.

In April 2014, Smiley Miley Inc. applied for registration of the word mark MILEY CYRUS as an EU trade mark and claimed protection with this mark for numerous services and goods in the field of video and video marketing, video games, shows and concerts, entertainment, sports, many things in the field of multimedia, as well as printed matter and useful items for mobile phones such as ringtones and skins.

Cyrus Trademarks Ltd (USA) then filed an action against this trade mark registration of the word sign Miley Cyrus since September 2014, claiming likelihood of confusion with its own earlier European figurative mark Cyrus, which is also protected for various goods and services in classes 9 and 20.

Earlier European Union figurative mark Cyrus

Trademark applicant Smiley Miley Inc. (SMI) argued that since Miley Cyrus is a famous American singer, the marks are sufficiently conceptually distinct. However, the EUIPO Opposition Division disagreed and considered likelihood of confusion to be present with the exception of Nice Class 25, as these goods and services were dissimilar.

SMI then appealed to the EUIPO Board of Appeal, which was also dismissed. The Board of Appeal found that the trade mark MILEY CYRUS and also the earlier trade mark CYRUS would not be perceived as names and that, even if this were the case, the element ‘Cyrus’ had greater distinctiveness than the element ‘Miley’. Therefore, the Board of Appeal also found a likelihood of confusion between the trade mark Miley Cyrus and the earlier EU trademark “Cyrus”. This decision was challenged by SMI before the European Court of Justice, which ruled today.

CJEU emphasises public perception

The CJEU first recalled that the likelihood of confusion includes the likelihood of association with the earlier mark. Of particular importance for the likelihood of confusion is therefore the public and its perception of the marks. Does the public consider the two parties to the dispute to be economically linked?

The applicant SMI first argued that the Board of Appeal could not base its assessment solely on the English-speaking public. But the Court of Justice of the European Union (CJEU) rejected this objection. For refusal of registration of an EU trademark, it is sufficient that a relative ground for refusal within the meaning of Article 8(1)(b) of Regulation No 207/2009 exists in a part of the European Union, the CJEU said. Therefore, its sufficient to base on the English-speaking public.

Fame of singer Miley Cyrus asserted

In essence, SMI also argued that the Opposition Division was wrong to find the marks confusingly similar. MILEY CYRUS was highly distinctive as a term, as evidenced by the fame and notoriety of the singer Miley Cyrus, as also evidenced by internet pages and images from social media.

With this objection, the plaintiff Smiley Miley Inc. (SMI) was successful. According to the applicant, when assessing a person’s name, it must always be taken into account whether the person applying for the registration of his first name and surname together as a trade mark is generally known (in accordance with ECJ judgment of June 2010, C:2010:368, paras 36 and 37).

Therefore, the Board of Appeal erred, the CJEU ruled, when it automatically applied the rule that consumers in certain Member States are more likely to remember the surname than the first name, without due regard to the particularities of the present case. This was because the Board of Appeal had used this general rule to justify that the element “Cyrus” had greater distinctiveness than the element “Miley” – and that there was therefore a likelihood of confusion in a direct comparison with the earlier mark “Cyrus”.

The CJEU today overturned this decision of the Board of Appeal in its entirety. Contrary to the assumption of the Board of Appeal, it must be assumed that the two elements first name and surname in the word mark MILEY CYRUS are to be regarded as equally distinctive, after all they refer to the famous singer and actress, as the CJEU emphasised.

Conceptually different marks in dispute

The applicant SMI was also correct in arguing that the conflicting marks are conceptually different, the CJEU added, thus also contradicting the Board of Appeal’s view.

According to the case-law, such conceptual differences can, under certain circumstances, neutralise phonetic and visual similarities between the signs in question – and such a circumstance was present in this case. The trade mark applied for, MILEY CYRUS, has a clear and specific meaning for the relevant public, since it refers to an internationally known public figure, Miley Cyrus, the court concluded.

Therefore, the CJEU annulled the contested decision of the EUIPO Board of Appeal of 2 April 2020 (Case R 2520/2018-4) in its entirety.

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