MILEY CYRUS trade mark wins: the EU General Court applies neutralisation doctrine
The judgment of 16 June 2021 of the General Court (case T-368/20) has applied, along the lines of the Court of Justice of the European Union ruling in the Messi case (C-449/18 P and C-474/18 P), the neutralisation doctrine. The conflict here concerned the earlier trademark “CYRUS” (figurative), owned by Cyrus Trademarks, Ltd, and the subsequent European Union trademark application “MILEY CYRUS”, filed by SMILEY MILEY, INC.
Cyrus Trademarks Ltd filed an opposition based on its earlier EU trademark (for goods in classes 9 and 20) against the EU trademark application “MILEY CYRUS” (for goods and services in classes 9, 16, 28 and 41) filed by SMILEY MILEY, INC.
Both the Opposition Division and the Board of Appeal of the EUIPO upheld the opposition for most of the goods and services applied for, based on the existence of a likelihood of confusion due to the goods and services being identical and the signs being visually and phonetically similar. As regards the conceptual similarity, the Board concluded that the comparison lead to a neutral result. The EUIPO found that, even if the name MILEY CYRUS referred to that of a famous American singer, songwriter and actress, it could not be treated as a “meaning” for the purposes of assessing conceptual similarity.
The decision of the General Court
The General Court analyses, in the first place, the distinctiveness of the elements composing the sign MILEY CYRUS, indicating that the Board of Appeal erred in considering that the “Miley” element would be perceived as a less dominant component than the element CYRUS.
In particular, the Court concludes that it has not been proven that the surname enjoys greater distinctiveness than the first name, highlighting that the singer Miley Cyrus is known by her first and last name, being both terms therefore equally distinctive. The Judgement also rejects the application in this case of the principle by which the public pays more attention to the beginning of the mark, an argument that – according to the General Court – has no impact on the assessment of the distinctive elements of a composite mark.
On the other hand, the Court agrees with the Board of Appeal regarding the existence of visual and phonetic similarities between the signs CYRUS and MILEY CYRUS. However, the Judgement disagrees in relation to the conceptual comparison, pointing out that the conceptual difference is relevant for counteracting the visual and phonetical similarities. This takes the Court to apply the neutralisation doctrine. In other words, despite the existing phonetical and visual similarities between the signs CYRUS and MILEY CYRUS (due to the presence in both cases of the word CYRUS) the relevant public will probably not mistake them. The reason being that the word combination “MILEY CYRUS” will be perceived as a reference to the singer whose fame and recognition is associated, precisely, to the combination of her name and surname, under which she performs and presents herself in the market.
Contrary to what was stated by the Board of Appeal, the General Court considers that the conceptual comparison cannot be classified as neutral when the name in question has become “the symbol of a concept, due, for example, to the celebrity of the person carrying that first name or surname, or when that first name or surname has a clear and immediately recognisable semantic content“.
In particular, the Judgment refers to the meaning of the term “concept” to determine the purpose and parameters of the comparison. It is based both on the literal definition of the word concept (an idea used to denote a specific or abstract thought which enables a person to associate with that thought the various perceptions which that a person has of it) and on the case-law on the subject, according to which conceptual similarity is interpreted as the coincidence of the terms in their semantic content.
The General Court thus refuses that the term Miley Cyrus may lack a meaning for the relevant public. To that effect, the Court points out to various aspects leading to its conclusion that it is not plausible -unless otherwise proven- to consider that the average consumer will not perceive the sign Miley Cyrus as a reference to the name of a specific person (as was also the case with the trademark “Messi”). Specifically, the Judgment points to the following elements on which it bases such assessment:
• Miley Cyrus is famous and recognized as a singer and actress.
• Miley Cyrus is a public figure of international reputation known by most well-informed, reasonably observant and circumspect persons.
• Miley Cyrus conducts her business and performs using her first and last name together.
• The sign Miley Cyrus has a clear and specific meaning that will be immediately grasped by the public.
The General Court’s judgment follows the application of the case law of the Court of Justice in the Picasso, Obelix and, more recently, the Messi cases. That is, in favour of the application of the neutralisation doctrine in cases where the mark corresponds to the name of a person whose celebrity and recognition suggests that, from a conceptual point of view it will be immediately recognized by the public, therefore excluding the existence of a likelihood of confusion. Celebrities thus appear to enjoy a certain plus.