OPPOSITION No B 2 404 781

Cyrus Trademarks Limited, Trident Chambers, PO Box 146, Wickhams Cay, Road Town, Tortola, Virgin Islands (British) (opponent), represented by Maguire Boss, 24 East Street, St. Ives PE27 5PD, United Kingdom (professional representative)

a g a i n s t

Smiley Miley, Inc., c/o Edelstein, Laird & Sobel LLP, 9255 Sunset Boulevard, Suite 800, 90069 Los Angeles, United States (applicant), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative).

On 30/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 404 781 is partially upheld, namely for the following contested goods and services:

Class 9: Musical sound recordings; musical video recordings; pre-recorded CDs, DVDs, audio discs, video discs, featuring music, downloadable audio recordings, downloadable video recordings, and downloadable MP3 files featuring music; downloadable multimedia files featuring music; computer carrying cases; downloadable electronic games via the Internet and wireless devices; cases for mobile phones; computer application software for mobile phones; fitted plastic films known as skins for covering and providing a scratch proof barrier or protection for electronic devices, namely, mobile telephones; audio and video recordings featuring music, comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages; cooking food and beverages, sports, games, animation, family and children's entertainment; phonograph records featuring music; audio tapes, video tapes, audio cartridges, and video cartridges featuring comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; downloadable audio recordings, downloadable video recordings, and downloadable MP3 files featuring comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; motion picture films, television shows and radio shows featuring music, comedy, action, adventure, drama and romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; downloadable multimedia files featuring comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; computers; radios; juke boxes; audio speakers; amplifiers; audio receivers; video receivers; televisions; MP3 players; digital audio players; digital video players; combination digital audio and video players; audio cassette players; video cassette players; global positioning systems; telephones; video disc players; video tape players; audio tape players; video recorders; audio recorders; video cameras; personal stereos; electronic diaries; personal digital assistants; camcorders; loudspeakers; headphones; microphones; CD players; headsets for telephones; headsets for use with computers and video game machines; media players; calculators; digital photo frames for displaying digital pictures, video clips and music, hand-held electronic device for receiving and reading electronically published materials; cases for media players; cases for MP3 players; cases for personal digital assistants; computer hardware;   computer joysticks; electronic publications, namely, books, magazines, manuals, journals, catalogs, brochures, newsletters, featuring music, comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment recorded on computer media; CD trading cards; electronic interactive board games for use with external monitor; interactive multimedia computer game programs; blank electronic storage media; flash memory cards; memory cards; video display cards; computer software for processing digital music file; music-composition software; software for creating music; software featuring musical sound recordings and musical video recordings; digital trading cards in the nature of multimedia software recorded on magnetic media featuring music, comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; multimedia software recorded on CD-ROM featuring music, comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; electronic game software; computer game cartridges, discs, and cassettes; computer game software; video game cartridges, discs, and cassettes; video game software; cameras; digital cameras; camera cases; bags for cameras and photographic equipment; digital camera accessory in the nature of a digital photo viewer; mobile telephones; devices for hands-free use of mobile phones; keyboards for mobile phones; mobile telephone batteries; mobile phone straps; fitted plastic films known as skins for covering and providing a scratch proof barrier or protection for electronic devices, namely, laptop computers, media players, MP3 players, smart telephones, digital cameras, global positioning systems and personal digital assistants; karaoke players; mouse pads.

Class 16: Printed material; printed material.

Class 28: Video game joysticks; game controllers for computer games; guitar skins for electronic guitar game controllers; video game interactive control floor pads or mats; video game interactive remote control units; video game machines for use with external display screens or monitors; hand-held electronic games adapted for use with television receivers only.

Class 41: Entertainment services, namely, live dramatic, comedic and musical performances by a professional entertainer and singer; production and distribution of motion pictures, television shows, and radio programs; production of sound and video recordings; production of interactive programs in the nature of entertainment shows for distribution via television, cable, satellite, audio and video media, and by electronic means, namely, via the Internet.

2. European Union trade mark application No 12 807 111 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 807 111 for the word mark ‘MILEY CYRUS’, namely against all the goods and services in Classes 9, 16, 25, 28 and 41. The opposition is based on European Union trade mark registration No 9 176 306 for the figurative mark and European Union trade mark registration No 4 750 154 for the word mark ‘CYRUS’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant for the earlier European Union trade mark registration No 4 750 154 for the word mark ‘CYRUS’. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted by the opponent for this earlier mark.

The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 9 176 306 for the figurative mark which is not subject to proof of use.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods

The goods on which the opposition is based are the following:

Class 9: Apparatus and instruments all for transmitting, receiving, recording and reproducing audio and visual signals; unrecorded magnetic tapes for sound recordings and cartridges for use therewith; loudspeakers, compact disc players and recorders; amplifiers; tuners; remote control units for the programming and operation of the aforesaid goods; apparatus for the wireless transmission of audio and video media; headphones; electrical communication apparatus/instruments; magnetic tapes bearing sound recordings and cartridges for use therewith; pre-recorded compact discs; gramophone records; metronomes; discs and tapes all being magnetic and for use with data processing apparatus; electric wires/cables; electrical connections; electrical distribution or control machines/instruments; rotary converters; phase modifiers; pre-recorded video discs/tapes; central processor units and hard drive storage discs adapted for the recordal, storage, reproduction and distribution of audio and video signals; digital and analogue receivers of distributed audio and video signals; software for the control of processors and of the distribution of audio and video signals; digital rights management (DRM) apparatus and equipment, and parts and fittings for the aforesaid goods; digital media apparatus and equipment, and parts and fittings for the aforementioned goods; electrical data processing equipment and apparatus; electronic display equipment and apparatus; liquid crystal display units; electronic apparatus and equipment for the reception, storage, transmission and distribution of digital media, and parts and fittings for the aforesaid goods; electronic apparatus and equipment for the processing of digital information, and parts and fittings for the aforesaid goods; cabinets for loudspeakers; credenzas adapted for electrical apparatus; mounting apparatus adapted for use with loudspeakers; cabinets adapted for high fidelity apparatus; cabinets adapted for electrical apparatus; wall brackets for electrical apparatus; furniture adapted for high fidelity apparatus; furniture adapted to hold electrical apparatus.

Class 20: Audio racks (furniture) for use with audio, visual and audio-visual equipment; fitted furniture for housing electrical equipment and apparatus.

The contested goods and services are the following:

Class 9: Musical sound recordings; musical video recordings; pre-recorded CDs, DVDs, audio discs, video discs, featuring music, downloadable audio recordings, downloadable video recordings, and downloadable MP3 files featuring music; downloadable multimedia files featuring music; computer carrying cases; downloadable electronic games via the Internet and wireless devices; cases for mobile phones; computer application software for mobile phones; fitted plastic films known as skins for covering and providing a scratch proof barrier or protection for electronic devices, namely, mobile telephones; audio and video recordings featuring music, comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; phonograph records featuring music; audio tapes, video tapes, audio cartridges, and video cartridges featuring comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; downloadable audio recordings, downloadable video recordings, and downloadable MP3 files featuring comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; motion picture films, television shows and radio shows featuring music, comedy, action, adventure, drama and romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; downloadable multimedia files featuring comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; computers; radios; juke boxes; audio speakers; amplifiers; audio receivers; video receivers; televisions; MP3 players; digital audio players; digital video players; combination digital audio and video players; audio cassette players; video cassette players; global positioning systems; telephones; video disc players; video tape players; audio tape players; video recorders; audio recorders; video cameras; personal stereos; electronic diaries; personal digital assistants; camcorders; loudspeakers; headphones; microphones; CD players; headsets for telephones; headsets for use with computers and video game machines; media players; calculators; digital photo frames for displaying digital pictures, video clips and music, hand-held electronic device for receiving and reading electronically published materials; cases for media players; cases for MP3 players; cases for personal digital assistants; computer hardware; computer joysticks; electronic publications, namely, books, magazines, manuals, journals, catalogs, brochures, newsletters, featuring music, comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment recorded on computer media; CD trading cards; electronic interactive board games for use with external monitor; interactive multimedia computer game programs; magnetic coded gift cards; blank electronic storage media; flash memory cards; memory cards; video display cards; computer software for processing digital music file; music-composition software; software for creating music; software featuring musical sound recordings and musical video recordings; digital trading cards in the nature of multimedia software recorded on magnetic media featuring music, comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; multimedia software recorded on CD-ROM featuring music, comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; electronic game software; computer game cartridges, discs, and cassettes; computer game software; video game cartridges, discs, and cassettes; video game software; cameras; digital cameras; camera cases; bags for cameras and photographic equipment; digital camera accessory in the nature of a digital photo viewer; mobile telephones; devices for hands-free use of mobile phones; downloadable ring tones for mobile phones; downloadable graphics for mobile phones; keyboards for mobile phones; mobile telephone batteries; mobile phone straps; fitted plastic films known as skins for covering and providing a scratch proof barrier or protection for electronic devices, namely, laptop computers, media players, MP3 players, smart telephones, digital cameras, global positioning systems and personal digital assistants; karaoke players; mouse pads; decorative refrigerator magnets; men's, women's and children's wearing apparel, namely, sunglasses.

Class 16: Printed material, calendars, souvenir books, show programs, posters, decals, and stickers; printed material, paper goods, writing implements, namely, writing ink, stamping ink and stamps, diaries, planners, greetings cards, autograph books, appointment books, coloring books, albums, namely, sticker albums, scrapbook albums and photograph albums, printed invitations, stationary, newsletters featuring information on musical events, concerts, appearances, fashion, music and entertainment; paper banners, paper pennants, book covers, wrapping paper, paper emblems, notebooks and non-metal money clips.

Class 25: Women's wearing apparel, namely, tops, bottoms, vests, jackets, scarves, sweaters, sweatshirts, hooded sweatshirts, sweatpants, t-shirts, polo shirts, tank tops, shirts, blouses, pants, jeans, shorts, slacks, capris, dresses, skirts, tunics, belts, and warm-up suits; men's and children's wearing apparel, namely, tops, bottoms, vests, coats, jackets, scarves, sweaters, sweatshirts, hooded sweatshirts, sweatpants, t-shirts, polo shirts, tank tops, shirts, blouses, pants, jeans, shorts, slacks, warm-up suits; men's, women's and children's wearing apparel, namely, capris, dresses, skirts, tunics, blazers, robes, beach cover-ups, belts, gloves, aprons, boas, bandanas, wraps, headbands, wristbands, sweatbands, pyjamas, dance costumes, Halloween costumes, masquerade costumes, costumes for use in role-playing games, sport jerseys, aprons, and uniforms; wearable blankets in the nature of blankets with sleeves; headwear, footwear, swimwear, beachwear, underwear, loungewear, sleepwear, nightwear, infant wear, rainwear, skiwear, surfwear, and neckwear.

Class 28: Video game joysticks; game controllers for computer games; guitar skins for electronic guitar game controllers; video game interactive control floor pads or mats; video game interactive remote control units; video game machines for use with external display screens or monitors; hand-held electronic games adapted for use with television receivers only.

Class 41: Entertainment services, namely, live dramatic, comedic and musical performances by a professional entertainer and singer; production and distribution of motion pictures, television shows, and radio programs; production of sound and video recordings; production of interactive programs in the nature of entertainment shows for distribution via television, cable, satellite, audio and video media, and by electronic means, namely, via the Internet; amusement park services, theme park services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The opponent’s apparatus and instruments all for transmitting, receiving, recording and reproducing audio and visual signals and digital media apparatus and equipment, and parts and fittings for the aforementioned goods are broad categories that include or overlap with many audio and visual devices such as the contested musical sound recordings; musical video recordings; radios; juke boxes; audio speakers; amplifiers; audio receivers; video receivers; televisions; MP3 players; digital audio players; digital video players; combination digital audio and video players; audio cassette players; video cassette players; telephones; video disc players; video tape players; audio tape players; video recorders; audio recorders; video cameras; personal stereos; camcorders; loudspeakers; headphones; microphones; CD players; headsets for telephones; headsets for use with computers and video game machines; media players; computer joysticks; cameras; digital cameras; digital camera accessory in the nature of a digital photo viewer; mobile telephones; keyboards for mobile phones; mobile telephone batteries; karaoke players. Therefore, these goods are identical.

The contested computers; global positioning systems; electronic diaries; personal digital assistants; calculators; digital photo frames for displaying digital pictures, video clips and music, hand-held electronic device for receiving and reading electronically published materials; computer hardware; flash memory cards; memory cards; video display cards overlap with the opponent’s electronic apparatus and equipment for the processing of digital information, and parts and fittings for the aforesaid goods. Therefore, they are identical.

The contested computer carrying cases; cases for mobile phones; fitted plastic films known as skins for covering and providing a scratch proof barrier or protection for electronic devices, namely, mobile telephones; cases for media players; cases for MP3 players; cases for personal digital assistants; camera cases; bags for cameras and photographic equipment; devices for hands-free use of mobile phones; mobile phone straps; fitted plastic films known as skins for covering and providing a scratch proof barrier or protection for electronic devices, namely, laptop computers, media players, MP3 players, smart telephones, digital cameras, global positioning systems and personal digital assistants; mouse pads are fittings for IT and audio-visual devices, the latter most often being digital equipment. Therefore, the opponent’s fittings for the aforesaid goods [electronic apparatus and equipment for the reception, storage, transmission and distribution of digital media] include the contested goods. Therefore, these goods are identical.

The contested blank electronic storage media includes, as a broader category, or overlaps with, the opponent’s discs and tapes all being magnetic and for use with data processing apparatus. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested pre-recorded CDs, DVDs, audio discs, video discs, featuring music; audio and video recordings featuring music, comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; phonograph records featuring music; audio tapes, video tapes, audio cartridges, and video cartridges featuring comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; motion picture films, television shows and radio shows featuring music, comedy, action, adventure, drama and romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; electronic publications, namely, books, magazines, manuals, journals, catalogs, brochures, newsletters, featuring music, comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment recorded on computer media; CD trading cards; electronic interactive board games for use with external monitor; interactive multimedia computer game programs; digital trading cards in the nature of multimedia software recorded on magnetic media featuring music, comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; multimedia software recorded on CD-ROM featuring music, comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; electronic game software; computer game cartridges, discs, and cassettes; computer game software; video game cartridges, discs, and cassettes; video game software are recorded content or data storage devices the same as some of the opponent’s goods, such as pre-recorded compact discs; gramophone records; discs and tapes all being magnetic and for use with data processing apparatus; pre-recorded video discs/tapes. These goods are identical or, at least similar to a high degree. For example, the contested pre-recorded CDs featuring music are included in the broad category of the opponent’s pre-recorded compact discs or the contested audio and video recordings featuring music, comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages are included in the broad category of, or overlap with, the opponent’s pre-recorded compact discs. Therefore, these goods are identical. On the other hand, the contested computer game cartridges, […], and cassettes are similar to a high degree to the opponent’s pre-recorded compact discs as these goods may have the same purpose and are in competition because the opponent’s goods may contain computer game software. They may also coincide in producers, end users and distribution channels.

The contested computer application software for mobile phones; computer software for processing digital music file; music-composition software; software for creating music; software featuring musical sound recordings and musical video recordings are identical or, at least, similar to a high degree to the opponent’s software for the control of […] the distribution of audio and video signals because these goods have at least the same nature and may coincide in their producers, end users and distribution channels.

The contested downloadable audio recordings, downloadable video recordings, and downloadable MP3 files featuring music; downloadable multimedia files featuring music; downloadable electronic games via the Internet and wireless devices; downloadable audio recordings, downloadable video recordings, and downloadable MP3 files featuring comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment; downloadable multimedia files featuring comedy, action, adventure, drama, romance, dance, concerts, health, lifestyle, preparing foods and beverages, cooking food and beverages, sports, games, animation, family and children's entertainment are downloadable media content similar to the opponent’s pre-recorded compact discs and/or pre-recorded video discs/tapes because they may have the same purpose as they may have the same content and, therefore, they are in competition. They also coincide in producers, end users and distribution channels.

However, the public will not expect to find the contested downloadable ring tones for mobile phones; downloadable graphics for mobile phones on the opponent’s pre-recorded compact discs and/or pre-recorded video discs/tapes. These goods do not have enough connection with the opponent’s goods in Classes 9 and 20 which are essentially IT and audio-visual devices and their parts and fittings, recorded and downloadable content and data storage devices, specific software and specific furniture for housing audio-visual and electrical equipment. These goods have a different nature, purpose and method of use. They do not coincide in producers, end users and distribution channels. They are neither complementary nor in competition. Therefore, they are dissimilar.

The contested magnetic coded gift cards are prepaid stored-value money cards usually issued by a retailer or bank to be used as an alternative to cash for purchases within a particular store or related businesses. They replace gift certificates. The contested decorative refrigerator magnets are used to adorn kitchens, as a souvenir, or simply to hold a note or photo to the refrigerator door. The contested men's, women's and children's wearing apparel, namely, sunglasses are protective eyewear designed primarily to prevent bright sunlight and high-energy visible light from damaging or discomforting the eyes. These goods have a different nature, purpose and method of use from the opponent’s goods. They do not coincide in producers, end users or distribution channels. They are neither complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 16

The contested printed material (listed twice) is similar to the opponent’s pre-recorded compact discs. These goods may have the same recorded content: therefore, they have the same purpose and they are in competition. They may also coincide in producers and end users.

The remaining contested goods, namely calendars, souvenir books, show programs, posters, decals, and stickers; paper goods, writing implements, namely, writing ink, stamping ink and stamps, diaries, planners, greetings cards, autograph books, appointment books, coloring books, albums, namely, sticker albums, scrapbook albums and photograph albums, printed invitations, stationary, newsletters featuring information on musical events, concerts, appearances, fashion, music and entertainment; paper banners, paper pennants, book covers, wrapping paper, paper emblems, notebooks and non-metal money clips do not have sufficient relation with the opponent’s goods in Classes 9 and 20. These goods have a different nature, purpose and method of use. They do not coincide in producers, end users or distribution channels. They are neither complementary nor in competition. The Opposition Division does not have sufficient information to determine if these goods can be sold on a pre-recorded CD or other pre-recorded supports. Therefore, they are dissimilar.

Contested goods in Class 25

The contested goods in Class 25 are wearing apparels which have no connection with the opponent’s goods in Classes 9 and 20. These goods have a different nature, purpose and method of use. They do not coincide in producers, end users or distribution channels. They are neither complementary nor in competition. The applicant argues that the opponent’s headphones are similar to the opponent’s goods in Class 25 because both goods are fashion items and may be provided by the same producers. The Opposition Division does not agree with this point of view, not only because headphones are not perceived by the public as complementary fashion goods related to articles of clothing such as handbags or purses in Class 18 that are likely to be considered by the consumers as aesthetically complementary accessories. Headphones are not closely coordinated with the opponent’s goods in Classes 9 and 20 either, and are not distributed by the same or linked manufacturers. Therefore, they are dissimilar.

Contested goods in Class 28

The opponent’s electronic apparatus and equipment for the processing of digital information, and parts and fittings for the aforesaid goods include computer hardware for games and gaming. These goods are similar to the contested video game joysticks; game controllers for computer games; guitar skins for electronic guitar game controllers; video game interactive control floor pads or mats; video game interactive remote control units; video game machines for use with external display screens or monitors; hand-held electronic games adapted for use with television receivers only to the extent that they may coincide in producers, end users and distribution channels.

Contested services in Class 41

The opponent’s pre-recorded compact discs may include entertainment content such as those of the contested entertainment services, live dramatic, comedic and musical performances by a professional entertainer and singer of Class 41. Therefore, these goods have the same purpose, may have the same commercial origin and be directed to the same public. These goods and services are therefore similar.

The same reasoning applies as regards the contested services, namely production and distribution of motion pictures, television shows, and radio programs; production of sound and video recordings; production of interactive programs in the nature of entertainment shows for distribution via television, cable, satellite, audio and video media, and by electronic means, namely, via the Internet. These goods and services are therefore similar.

The contested amusement park services feature various attractions, such as rides and games, as well as other events for entertainment purposes. The contested theme park services are offered by an amusement park that bases its structures and attractions around a central theme, often featuring multiple areas with different themes. These goods do not have sufficient relation with the opponent’s goods of Classes 9 and 20. They have a different nature, purpose and method of use. They do not coincide in producers, end users and distribution channels. They are neither complementary nor in competition. Therefore, they are dissimilar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar to different degrees are directed at the public at large and/or at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, the specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

	MILEY CYRUS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘CYRUS’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

‘CYRUS’ can be perceived as a given name, a surname or also as the name of a Persian king. This last meaning is only possible in the earlier mark because, in the contested sign, it is preceded by the word ‘MILEY’ which will be associated with a given name. Actually, the contested sign is the name of the famous American singer, songwriter, and actress Miley Ray Cyrus. Family names have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people who have nothing in common, whereas the presence of the same surname (provided it is not common in the relevant territory) could imply the existence of some link between them (identity of the persons or a family link). In determining whether, in a particular country, the relevant public generally attributes greater distinctiveness to the surname than the forename, the case-law of that country, although not binding on the Office or the EU courts, may provide useful guidelines (judgment of 01/03/2005, T-185/03, Enzo Fusco, EU:T:2005:73, § 52). In the present case, the given name ‘MILEY’ is much more extended than the surname ‘CYRUS’ and, therefore, less distinctive.

As regards the earlier mark, it is composed of a distinctive verbal element and less distinctive figurative elements of a purely decorative nature, namely the typeface stylisation and the additional stroke placed between the letter ‘Y’ and ‘R’. Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually and aurally, the signs coincide in that the earlier mark ‘CYRUS’ is totally incorporated in the contested sign. However, they differ in the less distinctive first verbal element ‘MILEY’ in the contested sign and, visually, in the additional figurative aspects of the earlier mark, although the latter are of little impact.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the earlier mark and the second verbal element of the contested sign may be perceived as the same name, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

The goods, found to be identical or similar to different degrees, target the public at large or business customers whose degree of attention may vary from average to high. The signs are visually, aurally and conceptually similar to an average degree. The distinctiveness of the earlier mark is normal.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In the present case, it is highly conceivable that the relevant consumer, even consumers who pay a high degree of attention, will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates.

Contrary to what the applicant argues, the fact that the mark applied for, ‘MILEY CYRUS’, is a reputed name (the applicant filed various items of evidence to substantiate this claim) does not serve to counteract the similarities between the signs at issue, in the context of assessing the likelihood of confusion. The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings because the common elements of the signs are frequent first names, such as Luciano, Michael or Isabel(l) whereas ‘CYRUS’ is not frequent, much less than the first name ‘MILEY’.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 9 176 306. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

The opponent has also based its opposition on earlier European Union trade mark No 4 750 154 for the word ‘CYRUS’. Even in the event that the evidence provided by the opponent for this earlier mark proves use for all the goods on which the opposition is based (which is the best scenario for the opponent), since this mark covers the same scope of goods as that of the earlier mark examined above, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Frédérique SULPICE

Benoit VLEMINCQ

Helen MOSBACK

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.