The European Court of Justice (ECJ) rules no likelihood of confusion in the case of Miley Cyrus vs. Cyrus, overturning the decision of the European Union Intellectual Property Office (EUIPO) which found a likelihood of confusion. The case concern itself with American Singer Miley Cyrus. The confusion was between two trademarks where the earlier trademark was "Cyrus" and the later trademark "Miley Cyrus." Smiley Miley Inc (USA) applied for the registration of the mark Miley Cyrus in 2014 as an EU trademark. The protection sought for the mark was in goods and services pertaining to 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. Meanwhile, Cyrus Trademark Ltd. has their trademark word sign "Miley Cyrus" for goods under class 9 and 20, and according to the application of Smiley, filed an action against this trademark, claiming likelihood of confusion.
Board of Appeal
The contention put by Smiley was that the American singer Miley Cyrus is famous enough to make the mark distinctive, but it was not accepted by the EUIPO opposition division and they considered the likelihood of confusion in the same despite the exception of Nice Class 25 with dissimilar goods and services. The appeal was also dismissed by the EUIPO Board of Appeal which Smiley appealed to. The Board found a similar likelihood of confusion with the trademark Miley Cyrus and Cyrus as these two would not be perceived as names, and if compared, the element Cyrus has greater distinctiveness than Miley. Therefore, as per the Board of Appeal, there was a clear case of likelihood of confusion which Smiley appealed to the ECJ.
European Court of Justice
For getting into a likelihood of confusion, there must be a likelihood of association with the earlier mark. Interpreting the likelihood of confusion, the ECJ observes that the most important point is to prove the public perception of the mark. The question of whether the public will link the two parties to the dispute is an important aspect to be answered. Smiley contended that the Board of Appeal erred in assessing solely on English speaking public, nevertheless, ECJ rejected the contention. ECJ observes that 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. Hence, the Board of Appeal basing itself on English speaking public was correct. Moreover, Smiley also found that the EUIPO erred in its finding of confusingly similar marks. With the good fame of American singer Miley Cyrus and with the strong presence on social media, the mark was highly distinctive. This contention of Smiley was successful as according to the ECJ judgment C:2010:368 para 36 and 37, while assessing the person name, it is to be ascertained that the name of the person applying the mark is generally known.
Thie contention was accepted and the ECJ ruled that the Board of Appeal erred in its finding, and 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 ECJ also emphasized that the first name and the surname need to be regarded as equally distinctive since they refer to a famous singer. The ECJ also agreed with the contention of Smiley that the conflicting mark is conceptually different. This difference neutralizes the phonetic and visual similarity present in the mark.
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