On 21 April 2014, the applicant Smiley Miley Inc. filed an application for registration of an EUTM for the word sign “MILEY CYRUS”, in regards to Classes 9, 16, 28 and 41. On 14 September 2014, Cyrus Trademark Ltd filed a notice of opposition against the application, based on a prior EUTM registered for Classes 9 and 20. On 30 October 2018 the Opposition Division partially upheld the opposition as found that there was a likelihood of confusion between the marks in relation to most of the goods and services applied for. This decision was appealed by the applicant and on 2 April 2020 the Fourth Board of Appeal decided to dismiss the appeal as also found that there was likelihood of confusion.


Regarding the distinctiveness and the weight of the elements of the mark applied for, in its decision, the Board of Appeal found that the word “Miley” would be perceived as a less dominant component in comparison with the word element “Cyrus”, alleging that in English-speaking countries more attention is given to the surnames by the consumers. However, the General Court understands that the Board erred in its finding as no evidence was brought in this regard. Furthermore, the Board did not take into account the specific features of the case, as the singer Miley Cyrus, to whom the applicant trade mark refers, is well-known by both her name and surname together, and not using one of them individually.

About the visual and phonetic comparisons, the General Court states that the Board of Appeal was right in finding that the similarity was average between the signs, as both share the word element “Cyrus”.

Then the General Court found that the Board erred in finding that the applicant trade mark, “Miley Cyrus” has no conceptual meaning. As the General Court states, a conceptual comparison remains possible where the name or the surname has become the symbol of a concept, due, for example, to the celebrity of the person carrying that name or surname. So, the Board should have concluded that the relevant public would associate the words “miley cyrus” with the famous actress and singer. And the fact that the earlier EUTM has the same word “Cyrus”, even though it has no common meaning, does not imply that the public will think about the singer when reading the term “Cyrus” alone.

Thus, under certain circumstances the conceptual differences may counteract the visual and phonetic similarities, the General Court decided to annul the Board of Appeal decision. Since “Miley Cyrus” has a clear and specific meaning referring to the world-known actress and singer, the relevant public will be able to identify the origin of the goods and services designated by the trade mark.

Judgement of the General Court, case T-386/20, 16 June 2021