Conceptual comparison and famous names in trade mark applications - Miley Cyrus opposition overturned by General Court

Readers may remember that, back in September 2020, the CJEU considered whether there was a likelihood of confusion where a mark being filed for registration was that of MESSI, renowned football player that everyone has heard of in one context or another (the existing mark upon which opposition was based which was ‘MASSI’). This case (joined cases C-449/18 P and C-474/18 P) reaffirmed a significant clarification of trade mark law set out by the earlier EU General Court decision - namely, that visual and aural similarities could be counteracted by conceptual differences (see IPKat commentary here).

The earlier EU figurative TM in question

Another such case arose in June in the General Court, this time involving the application for EU word mark ‘MILEY CYRUS’ and opposition raised by the owner of the earlier EU trade mark ‘CYRUS’. Let’s see what happened.

Background

On 21 April 2014, Smiley Miley, Inc. filed an application with the EUIPO to register the sign ‘MILEY CYRUS’ for goods and services in the following classes:

• Class 9, including musical sound recordings, music video recordings and downloadable multimedia files featuring music;
• Class 16, including printed material, posters and decals;
• Class 28, including video game controllers and game controllers; and
• Class 41, including entertainment services, namely, live dramatic, comedic and musical performances by a professional entertainer and singer; and production and distinction of motion pictures, television shows and radio programs.

In September 2014, an opposition was filed on the grounds of Article 8(1)(b) of Regulation 207/2009 (now Article 8(1)(b) of Regulation 2017/1001 - 'the EUTMR'). The opposition relied on the earlier EU figurative mark (pictured above) covering goods in classes 9 (including apparatus and instruments all for transmitting, receiving, recording and reproducing audio and visual signals) and 20 (including fitted furniture for housing electrical equipment and apparatus).

In October 2018, the Opposition Division partially upheld the opposition on the basis of there being a likelihood of confusion between the mark applied for and the earlier trade mark for most of the goods (with some small exceptions made for goods and services in classes 9, 16 and 41. The same conclusion was subsequently reached by the the Fourth Board of Appeal upon appeal.

GC judgment

As a preliminary point, the General Court (GC) set out that the the relevant territory for the purposes of assessing likelihood of confusion is that of the European Union as a whole, but that the Board of Appeal did not err by only taking into account the perception of the English-speaking public.

Turning to the degree of distinctiveness and relative weight of the elements of the signs, it noted that the verbal elements of the mark would be perceived as a first name and surname. However, consumers’ perception of signs made up of a person’s first name and surname would vary from country to country, and one would have to take into account the specific features of each case. In this regard, the GC disagreed with the automatic presumption of the Board of Appeal that the surname ‘Cyrus’ would be the more dominant element of the earlier sign.

As such, taking into account the fact that neither ‘Miley’ nor ‘Cyrus’ are common names, that the singer is known by both names together, and that the English-speaking public (which the earlier Board of Appeal specifically referred to) does not find a surname more distinctive than a first name, the General Court determined that both elements were equally distinctive, and that the Board of Appeal had been wrong to find that ‘Miley’ would be perceived as a less dominant element compared to the element ‘Cyrus’. This would not be affected by the assertion that the public would pay greater attention to the beginning of a mark than its end.

Visual, phonetic and conceptual comparison

The General Court reasserted the position of the Board of Appeal, stating that there was average visual and phonetic similarity between the signs. However, on the issue of conceptual similarity, the GC disagreed with the Board of Appeal’s earlier finding that the conceptual comparison of the marks was neutral, since the Board of Appeal had found that the name ‘Miley Cyrus’ would not have ‘meaning’ for the purposes of conceptual comparison.

The GC reiterated that the purpose of conceptual comparison is to compare the ‘concepts’ that the signs convey, with ‘concepts’ stated to be “a general and abstract idea used to denoted a specific of abstract thought which enables a person to associate with that thought the various perception which that person has thought of it and to organise knowledge about it”. In this regard, conceptual similarity would mean that the signs at issue coincide as to their semantic content, and that conceptual comparison would be possible where the first name or surname has become the symbol of a concept, such as the celebrity of the person carrying that first name, or where the first name/surname has a clear and immediately recognisable semantic content.

More TM news to come...
Credit: me :)

In this instance, the GC found that the name ‘Miley Cyrus’ had become the symbol of a concept, due to the celebrity status of the person carrying that name. Thus, the Board of Appeal had erred in finding that the name of Miley Cyrus would have no conceptual meaning.

Looking at the later submitted argument of the EUIPO that Cyrus is not a common surname, and that the relevant public would perceive the surname alone as the short version of the full name ‘Miley Cyrus’, the GC also held that, since Miley Cyrus had never solely used the name ‘Cyrus’ in isolation in the course of her career, the earlier mark ‘CYRUS’ would have no particular semantic meaning for the relevant public. As such, conceptual comparison would not be neutral.

Further, noting that conceptual differences would counteract the findings of visual and phonetic similarity where at least one of the signs had a clear and specific meaning from the point of view of the relevant public that they would grasp immediately, the GC found that such counteraction would occur in the present case. Since MILEY CYRUS has a clear and specific semantic content referring to a public figure of international repute, known by most well-informed, reasonably observant and circumspect persons, it would not be plausible that the average consumer would disregard such meanings and perceive ‘Miley Cyrus’ principally as a mark of goods and services.

To this end, following a global assessment of the overall impression of the mark, the GC found that the signs at issue were different, and that the Board of Appeal decision was to be annulled.

Comment

One of the factors that notably distinguishes this decision from previous ones is the fact that a first name was involved. Unlike the MASSI and Ruiz-Picasso decisions, which involved some (very famous) last names, this case made apparent that the findings in such rulings could be extended to marks covering first names and surnames of celebrities, though dependent on the facts of the case.

It would appear that the link between reputation and likelihood of confusion has now been made slightly clearer. Rather than ‘reputation’ being meant in the sense iterated under Articles 8(5) and 9(2)(c) EUTMR, the reputation of a celebrity could contribute to the finding that their name has become a symbol of a concept. However, the threshold at which conceptual differences may be found to counteract phonetic and visual similarities is still unclear - everyone has heard of Miley Cyrus, but what about, for example, lesser known celebrity names? The threshold upon which such counteraction may occur will depend on decision-making practice and case law yet to come…