A recent decision of the EU General Court looks like good news for celebrities. The singer Miley Cyrus had applied to register her name as an EUTM, but the EUIPO Board of Appeal found that there was a likelihood of confusion with an earlier figurative registration for CYRUS (pictured).
In its judgment on 16 June, the General Court reversed that finding (Case T-368/20). The Court found that it was uncontested that Miley Cyrus is well known and “a public figure of international reputation known to most well-informed, reasonably observant and circumspect persons who read the press, watch television, go to the cinema or listen to the radio”.
It added that a conceptual comparison between two signs is possible where a first name or surname “has become the symbol of a concept, due, for example, to the celebrity of the person carrying that first name or surname”.
Such was the case for Ms Cyrus: “the relevant public was likely to make a conceptual association between the group of words ‘miley cyrus’ and the name of the famous American singer and actress.”
This finding meant the marks were conceptually different and not, as the Board had found, that the conceptual comparison was neutral. In the global assessment, the conceptual differences counteracted the visual and phonetic similarities between the marks – and there was no likelihood of confusion.
The case calls to mind the trade mark dispute involving the footballer Lionel Messi, in which the CJEU last year found no likelihood of confusion between a figurative trade mark for MESSI and an earlier trade mark MASSI. In that case, the courts found that the reputation of Messi “constituted a well-known fact … likely to be known by any person or which can be known by generally accessible sources” (Joined Cases C ‑ 449/18 P and C ‑ 474/18 P).
Is this good news for celebrity trade mark applicants? It would seem so – although both Ms Cyrus and Mr Messi are arguably at the top end of international recognition given their achievements in their respective fields. How many other public figures are similarly well known that they could benefit in the same way? Maybe just a few or maybe, in today’s celebrity-driven multimedia world, quite a large number.
To find out more about the issues raised in this case including trade mark disputes and filing contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com
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