Does the name ‘Miley Cyrus’ ring a bell?
In 2014 Smiley Miley Inc. (Miley Cyrus’s company) applied for the EU trade mark for, perhaps unsurprisingly, ‘Miley Cyrus’ to be used on CDs, software, calendars, and clothing among other goods.
The application was opposed by a British Virgin Island based company Cyrus Trademarks Limited, on the basis of its two trade marks for ‘Cyrus’ registered in 2007 and 2010 and covering various sound equipment.
There are several grounds on which trade mark applications can be opposed in the EU, and in this instance the opponent claimed that:
- Trade marks are similar, because they coincide in the word CYRUS which is ‘the name of a famous king of Persia’, whereas the word MILEY has no conceptual meaning;
- Goods covered by the trade marks are similar because they are ‘sound-related’;
- There is a likelihood of confusion on the part of the public, i.e., the consumers might think that the goods come from the same or economically-linked companies, for example, they might think that MILEY CURYS is ‘a new line of the audio equipment originating from the opponent’.
The EU Intellectual Property Office found in favour of the opponent and refused the MILEY CYRUS application. Smiley Miley failed to convince the EUIPO that the application should be allowed, and the case went all the way through to the EU Court of Justice (CJEU).
The CJEU has finally overruled the EUIPO’s decision in June 2021 (some 7 years after the opposition was filed), ruling that there is no possibility that the brands could be confused and dismissing the argument that the name Miley Cyrus has no conceptual meaning. It stated: ‘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.’
This is a further development in the way the EU Intellectual Property Office and indeed the courts analyse the likelihood of confusion: this is not a robotic exercise of comparing the signs and the goods/services provided under the signs and automatically finding the likelihood of confusion where these are similar/identical. Instead, whether the consumers will actually be confused should be assessed carefully based on the facts of each particular case.
Briffa, being an expert in all aspects of intellectual property law and practice, will be happy to assist you if you have received an opposition to your trade mark application, or indeed if you became aware of an application for a trade mark similar to your brand and would like to discuss your options. Please feel free to drop us an email or give us a call and we will be happy to arrange a free 30-minute consultation with one of our specialist IP lawyers.
Written by Anastasia Troshkova, Solicitor