Miley not so smiley
David Yeomans summarises one of the latest name-related disputes. R 2520/2018-4, Smiley Miley Inc v Cyrus Trademarks Ltd, EUIPO, 2nd April 2020
An EU trade mark application by Smiley Miley Inc (SMI) to register the mark MILEY CYRUS in classes 9, 16, 25, 28 and 41 was opposed by Cyrus Trademarks Ltd (CTL) on the basis of a claimed likelihood of confusion with the figurative CYRUS registration (shown right), protected for various goods in classes 9 and 20.
SMI argued that because Miley Cyrus is a famous American singer, the marks are sufficiently distinguishable conceptually. The Opposition Division (OD) did not agree, deeming the marks to be confusingly similar. The opposition was dismissed in relation to class 25 on the basis that the respective goods were dissimilar. However, it succeeded in relation to the majority of the other goods and services applied for. SMI then appealed to the Board of Appeal (BoA).
OD error?
In its appeal, SMI claimed that the OD had erred in deeming the marks confusingly similar. It supplemented its arguments that MILEY CYRUS is highly distinctive with evidence in the form of internet pages and images from social media. It contended that the marks were conceptually different since the earlier mark would be seen as a reference to Cyrus, a Persian king, and the mark applied for was a reference to Miley Cyrus, the American singer.
The Board of Appeal (BoA) rejected SMI’s arguments. It stated that the marks would not be perceived as names and that, even if they were, it would not assist SMI because the element MILEY is more common and therefore less distinctive than the element CYRUS. Accordingly, consumers may believe that MILEY CYRUS is the full name of Cyrus, or, conversely, that CYRUS is the mark belonging to Miley Cyrus where the first given name has simply been omitted. The BoA determined that in each of these examples the respective marks would refer to the same perceived name – in other words, have the same commercial origin.
The BoA also dismissed SMI’s arguments regarding the distinctiveness of MILEY CYRUS. While the Opponent’s mark may benefit from enhanced distinctiveness through use or reputation, in opposition proceedings the Applicant’s mark cannot. This is because, according to EUIPO practice, when considering whether or not a trade mark application falls foul of any of the relative grounds for refusal, events or facts that arose before the filing date cannot be used in support of the application.
No right to register
This case illustrates that in EU opposition proceedings the distinctiveness of the mark applied for cannot be more than normal, even if it relates to a famous person. It is also a reminder that an applicant may, in certain circumstances, have the right to use their own name in commerce, notwithstanding a conflicting third-party registration. However, this is not relevant in assessments of a likelihood of confusion because it does not extend to a right to register a personal name.
Key points
- The Applicant could not rely on fame or reputation
- A right to use a personal name does not equate to a right to register it as a trade mark
