US pop star Miley Cyrus will be able to use her name as a registered trademark in the European Union (EU), after the European General Court (EGC)’s decision on the EU trademark ‘MILEY CYRUS’. The case had been initially rejected by the EUIPO back in 2014, when the singer applied to register her stage name as a trademark with the European Union Intellectual Property Office (EUIPO). The case was led by Jean Devaureix, lawyer and Head of Litigation at PONS IP, who was also responsible for successfully defending Messi’s trademark in 2018 before the Court of Justice of the European Union. Devaureix also had PONS IP Trademark team’s technical support, with the help of PONS IP’s Trademark Manager Carmen González and Trademarks Department Legal Manager Amparo del Río.
The recent judgment overturned EUIPO’s decision of 2 April 2020, which supported part of its opposition argument for the ‘CYRUS’ trademark by mentioning that, in the face of the singer’s registration application, confusion between the two registered trademarks would have been possible. After the EGC ruling, the well-known artist will be able to use her trademark freely on a wide variety of products and services within the European Union, such as audio and video discs, mobile phone cases, e-books, electronic board games, calendars, among others.
According to counsel Jean Devaureix, the relevance of the General Court’s judgment is that ‘not only do the parties agree that neither Miley nor Cyrus is a common first or last name for the English-speaking public, but also that the public does not perceive either the name Miley or the surname Cyrus as common’. Moreover, as the court notes, the famous singer and actress is known by her first and last names together, so ‘these two elements must be regarded as equally distinctive, and one cannot be regarded as dominant in relation to the other, as the applicant rightly claims’. Devaureix recalls that the Court concluded that the Board of Appeal was therefore ‘wrong’ to consider that the ‘miley’ element within the requested trademark would be perceived as less dominant in comparison with the ‘cyrus’ element.
Regarding visual and phonetic comparison, the General Court considers that the Board of Appeal was right to find that the phonetic similarity of the trademarks at issue was average. However, regarding the conceptual comparison, the General Court concluded that the Board of Appeal was not right in considering that subject of the requested trademark, i.e., the name of the famous American singer and actress Miley Cyrus, has no conceptual meaning. On the contrary, the judgment states that the requested trademark, MILEY CYRUS, has a clear and specific semantic content for the relevant public, since it refers to a public figure with international reputation, known to most well-informed, reasonably observant and perceptive persons.