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You want to apply for a trademark that is visually or phonetically similar to another trademark, perhaps it even is contained as a whole. Is this possible without infringing on someone else's trademark rights?
As one of the most recent decisions of the General Court of the European Union (GC) shows, conceptual differences may nevertheless allow registration of such trademark.[1]
In the particular case, the trademark MILEY CYRUS was opposed on the basis of an earlier trademark, CYRUS. There was a similarity of goods and the earlier sign was fully incorporated in the younger mark. And yet the GC did not find for likelihood of confusion, and admitted the MILEY CYRUS mark for registration as an EU trademark:
The name Miley Cyrus has become the symbol of a concept, due to the celebrity of the person carrying that name. Particularly, this person markets her activities and performs on stage using this name. The public therefore associates the claimed products with the name of the famous singer. Thus, the conceptual differences counteracted the visual and phonetic similarities and the GC concluded the trademarks were different overall.
Therefore, when confronted with a claim based on likelihood of confusion, you should always keep an eye on conceptual differences and actively address them because, as a recent decision in Austria has shown, such differences can also be missed by the deciding bodies, leading to refusal of such trademark despite existing conceptual differences.[2] In that case, the opposed trademark included a picture of a famous artist with the same name as the trademarks, which would have associated the opposed trademark rather with the artist than the older trademark (EGON TO GO/EGON).
If you require further guidance on how to protect and defend your trademarks, please do not hesitate to contact us at trademarks[@]schoenherr.eu.
[1] GC 16.6.2021, T-368/20, Miley Cyrus.
[2] OLG Wien 6.11.2020, 33 R 94/20s, EGON TO GO, ecolex 2021, 454 (Vesenmayer).
This article is part of our trademarks series - get more insights in our further trademarks articles: Trademarks: The aftermath of BREXIT – Are your trademarks and designs protected in the UK?