Member Article

ossibly the most confusing issue in trade mark law is this: when are two trade marks confusingly similar? We’ll discuss two recent European trade mark judgments which hopefully don’t add to the confusion.

THE MILEY CYRUS CASE

Is the trade mark MILEY CYRUS confusingly similar to the trade mark CYRUS? That’s the issue that the European Union General Court had to grapple with recently.

Miley?

We probably don’t need to tell you this, but Miley Cyrus is a well-known singer and entertainer. If you do need telling we’re afraid that makes you uninformed, unobservant and the opposite of circumspect. It’s not us saying this but rather some very senior judges. Well-known singers and entertainers do, of course, have companies that hold their IP rights, and Miley Cyrus is no exception. Miley’s company goes by the upbeat name of Smiley Miley Inc.

The application

Smiley Miley filed an application in the European Union to register the trade mark MILEY CYRUS for a wide range of goods and services. The application covered things like video games, ring tones, printed matter, concerts and entertainment services (classes 9, 16, 28 and 41).

The opposition

The application encountered opposition from a company called Cyrus Trademarks Ltd (USA). The basis of the opposition – there was a likelihood of confusion with a European Union registration for a trade mark comprising the word CYRUS in a stylised form for various goods and services in classes 9 (loudspeakers, compact disc players and recorders; amplifiers; tuners etc.) and 20 (audio racks (furniture) for use with audio, visual and audio-visual equipment).

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Smiley Miley was unperturbed, arguing that the conceptual differences clearly differentiated the trade marks, with Miley Cyrus being a world-famous singer and entertainer and all that.

The first tribunal

Smiley Miley’s argument didn’t go down too well at first, with the Opposition Division of the European Union Intellectual Property Office holding that there was indeed a likelihood of confusion. The reasoning: Cyrus is an unusual name, and the mark MILEY CYRUS totally incorporates the earlier mark CYRUS. Smiley Miley appealed to the Board of Appeal, but seemingly didn’t appeal enough. The Board also held that the two trade marks were confusingly similar, making the point that the word Cyrus is the main element of both marks.

The next level

Smiley Miley remained upbeat, and took this matter to the next level, where the General Court overturned the earlier findings. The court made a number of points that are worth mentioning:

• The fame of Miley Cyrus was certainly relevant. The court said this: “The reputation of the singer and actress Miley Cyrus is such that it is not plausible to consider that, in absence of specific evidence to the contrary, the average consumer, confronted with the mark Miley Cyrus designating the goods and services in question, will disregard the meaning of that sign as referring to the name of the famous singer and actress.”
• The earlier tribunal had been wrong to consider the names separately, and to simply conclude that two trade marks featuring the name Cyrus could result in confusion. There were conceptual differences here and conceptual differences can in certain circumstances override visual and phonetic similarities. “It follows that the conceptual differences existing in the present case between the marks at issue are such as to counteract the visual and phonetic similarities.”
• There was no evidence that Miley Cyrus is known simply as Cyrus. The court said that she “has specifically never used the name Cyrus in isolation on the course of her career.” The name Miley Cyrus “has a clear and specific semantic content for the relevant public given that it refers to a public figure of international renown, known by most well-informed, reasonably observant and circumspect persons.”
• The court referred to a recent case involving Lionel Messi where the court held that this very well-known name would not be confused with Massi.
• Finally, it is okay for a European Union court to make a finding of likely confusion on the basis of the English-speaking portion of the public in the European Union member states (even if the largest source of English speakers has chosen to extract itself from the union). It is sufficient if there is a likelihood of confusion amongst a part of the population in the European Union.
  
  

THERE’S COCO IN INCOCO

We’ll end with a brief mention of another interesting trade mark opposition in Europe. A company filed an application to register the trade mark INCOCO in class 3 for cosmetics, amongst other goods. This application was opposed on the basis of a registration for the trade mark COCO in class 3, also for cosmetics.

The opposition succeeded at the first level, but the Board of Appeal overturned this decision. The case then went on to Europe’s highest court, which found that the trade marks were confusingly similar. The court made the point that the mere fact that the first element differs is not decisive, and here the trade marks were clearly similar, visually and phonetically. There was no need to dwell on any possible conceptual similarity relating to the person Coco Chanel.

As said at the outset, these things are not always easy to predict.

Reviewed by Manisha Bugwandeen-Doorasamy, an executive in ENSafrica’s IP department.

Fae Hassan
IP Associate
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