Miley Cyrus as an EU trademark? On the registration of first names and surnames

Famous US singer Miley Cyrus can register her name as an EU trademark. This conclusion was reached by the General Court of the European Union in June after the European Union Intellectual Property Office (EUIPO) had previously refused to register the artist’s trademark due to a conflict with the CYRUS brand.

Name as a trademark

Both Polish and EU regulations do not prohibit the registration of a name as a trademark. However, it is necessary to meet the criteria set out in the law, including having the so-called distinctiveness. As with other signs, absolute and relative grounds of appeal will also apply to first and last names, which may effectively prevent the registration of a given trademark. While absolute grounds of appeal are considered by the relevant industrial property office ex officio, relative grounds of appeal are only assessed after an opposition has been filed by the interested party. As a result of opposition, it will not be possible to register a trademark that is identical or similar to an earlier trademark and where the goods or services to which it relates are identical or similar if there is a risk of confusion on the part of the public, which includes, in particular, the risk of association between the trademark applied for and the earlier trademark. It was precisely this premise of a risk of confusion that was raised by Cyrus Trademarks Ltd in its dispute with a well-known celebrity.

Miley Cyrus vs. CYRUS

The dispute between Cyrus Trademarks Ltd and the singer started in 2014 when Smiley Miley Inc. applied to obtain protection rights in the European Union for the trademark “Miley Cyrus” for gadgets, CDs and DVDs, posters, and calendars, or live performances, among others. Standing in the way of the registration was a company from the British Virgin Islands, which had registered the figurative trademark “Cyrus” several years earlier, opposing the registration of the word sign “Miley Cyrus” at the EUIPO.

EUIPO concluded that for most goods and services there was a likelihood of consumer confusion, and to that extent upheld the opposition of Cyrus Trademarks Ltd. However, the company representing the interests of the American celebrity did not give up and the case went to the General Court of the European Union.

application number: 009176306

place of application: European Union Intellectual Property Office

The General Court of the European Union disagreed with the findings of the Alicante office, which had refused the singer’s application for registration on the grounds that the “miley” element was less dominant than the “cyrus” element in assessing the likelihood of confusion due to the similarity of the signs. The Luxembourg judges pointed out that, depending on the country, consumers may perceive trademarks consisting of a combination of a first name and a surname differently. Moreover, the trademark applied for refers to the name of a singer and actress who is known by that name together and not by each individual name, so both elements of the trademark applied for are equally distinctive and neither dominates the other.

Admittedly, as regards the visual and phonetic similarity of the marks compared, the General Court of the European Union agreed with the findings of the EUIPO, which described both similarities as average. However, because of the fame and recognisability of the artist, known to most well-informed and reasonably observant persons who read the press or watch television, the signs are conceptually different, since the relevant public may associate the name of the American celebrity with the words ‘miley cyrus’. In view of those conceptual differences, which cancel out the visual and phonetic similarity of the signs, the General Court of the European Union held that the signs at issue are different and therefore annulled the contested EUIPO decision.

Messi or Massi?

A similar problem to Miley Cyrus was faced by the famous footballer Lionel Andrés Messi Cuccittini when he tried to register the trademark “Messi” for sports articles and clothing in 2011. Opposition to the registration was filed by Jaime Masferrer Coma, who invoked a likelihood of confusion with the EU trademarks ‘MASSI’, registered several years earlier.

application number: 010181154

place of application: European Union Intellectual Property Office.

As in the case of the American singer, the EUIPO upheld the opposition on the grounds of visual and phonetic similarity. However, the case went to the General Court of the European Union, which annulled the decision made by the Alicante office. As Leo Messi is a world-famous footballer who is often heard about on TV and radio, the average consumer can associate the term “messi” with the name of the famous player, which demonstrates the difference between the signs on a conceptual level. Therefore, due to the reputation that the name of the Argentine sportsman enjoys, despite some phonetic and visual similarities, the signs ‘Messi’ and ‘Massi’ are different. The long-standing dispute surrounding the registration of the ‘Messi’ trademark was finally settled by the Court of Justice of the European Union in September 2020.

Is registration a trend?

The tendency to register first names and surnames, or first names alone, as trademarks can already be observed throughout the world. Undoubtedly, this is one of the elements of creating a personal brand and a way to generate additional profit. As seen in the examples of Leo Messi and Miley Cyrus, long-standing disputes over trademark registration can be successful, and the celebrities’ popularity can be an important factor in successfully getting a mark registered by neutralizing the risk of confusion. Finally, Rihanna, Katy Perry, and Michael Jordan are among the celebrities whose names enjoy trademark protection. David and Victoria Beckham went a step further and not only registered their own names but also took care of their children’s interests by registering their names.

Sources:

https://curia.europa.eu/juris/document/document.jsf;jsessionid=715257B5A37F2104C0306D1ADEC24262?text=&docid=242943&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=9722249

https://curia.europa.eu/jcms/upload/docs/application/pdf/2018-04/cp180056pl.pdf

https://www.prawo.pl/biznes/nazwisko-jako-znak-towarowy-na-przykladzie-sprawy-leo-messiego,504450.html

Author: Marlena Kudła – lawyer at LSW Leśnodorski Ślusarek and Partners.