Mickey is free! It may not be as free, though…
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Söğüt Atilla-Aydın
Jun 6, 2026, 9:07:30 AM (3 days ago) Jun 6
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Home / Article 8(1)(b) EUTMR / Disney / likelihood of confusion / Mickey Mouse / Söğüt Atilla-Aydın / trade marks / Mickey is free! It may not be as free, though…
Mickey is free! It may not be as free, though…
On 21 May, the First Board of Appeal (BoA) of the EUIPO delivered a decision, concerning whether the sign “MICKEY IS FREE!” creates a likelihood of confusion with Disney’s figurative MICKEY mark and thus should be refused registration under Article 8(1)(b) of the EU Trade Mark Regulation (EUTMR).
Disney (opponent) filed an opposition citing likelihood of confusion with its earlier trade mark (below), which is also registered, inter alia, in Class 25 for jackets, sweatshirts and T-shirts.
The Opposition Division held that the English-speaking part of the EU understands the element ‘Mickey’ as a reference to Disney’s famous cartoon character, Mickey Mouse, and that it enjoys a normal degree of distinctiveness in relation to clothing. Likewise, the phrase following ‘Mickey’ in the applicant’s sign was found to enjoy a normal degree of distinctive character since ‘is free’ is perceived as Mickey being ‘liberated or unrestrained’ and thus, remains a vague and non-descriptive concept for clothing.
Comparing the two signs, the Opposition Division held that they are (i) visually similar to a below-average degree as the only common element is the word ‘Mickey’, (ii) aurally similar to an average degree given the identical pronunciation of ‘Mickey’ in both signs and the consumer tendency to shorten long marks (i.e., pronouncing the earlier mark simply as ‘Mickey’, rather than ‘Disney Mickey & Co.’), and (iii) conceptually similar to an average degree because both signs trigger an association with the same cartoon character.
Consequently, the Opposition Division held that the latter sign creates a likelihood of confusion in the mind of the average consumer as it can be perceived as a sub-brand or a variation of Disney’s earlier mark.
The applicant appealed.
Broadly confirming the initial decision, the Board found that (i) Disney’s sign enjoys a normal degree of distinctiveness, (ii) the visual similarity between the signs is low, particularly given the different elements surrounding the identical ‘Mickey’ texts, and (iii) aurally the signs are similar, at least, to an average degree after comparing the pronunciation of the opponent’s mark [mɪki] with the contested sign [mɪki ɪz friː]. Slightly differing from the Opposition Division, the BoA held that the signs are conceptually similar to at least an above-average degree. The Board did not merely focus on the common ‘MICKEY element but also assessed the impact of ‘IS FREE!’. That said, it still concluded that the addition of a phrase suggesting Mickey is liberated, merely prevents the signs from being conceptually identical.
Against this background, and given the identity of the relevant goods, the Board dismissed the appeal, ruling that even if the average consumer can visually differentiate the signs a likelihood of confusion may still arise, particularly because of this high conceptual similarity.
Background
In August 2024, Karl Erik Dahl (applicant) filed an application to register “MICKEY IS FREE!” as an EU trade mark for hoodies, jackets, long-sleeved shirts, sweatshirts, and T-shirts in Class 25 of the Nice Classification.Disney (opponent) filed an opposition citing likelihood of confusion with its earlier trade mark (below), which is also registered, inter alia, in Class 25 for jackets, sweatshirts and T-shirts.
Comparing the two signs, the Opposition Division held that they are (i) visually similar to a below-average degree as the only common element is the word ‘Mickey’, (ii) aurally similar to an average degree given the identical pronunciation of ‘Mickey’ in both signs and the consumer tendency to shorten long marks (i.e., pronouncing the earlier mark simply as ‘Mickey’, rather than ‘Disney Mickey & Co.’), and (iii) conceptually similar to an average degree because both signs trigger an association with the same cartoon character.
Consequently, the Opposition Division held that the latter sign creates a likelihood of confusion in the mind of the average consumer as it can be perceived as a sub-brand or a variation of Disney’s earlier mark.
The applicant appealed.
Board’s decision
The BoA essentially held that, since both signs refer to the same well-known cartoon character which ‘enjoys a high degree of cultural recognition as a matter of general awareness’, it is possible for consumers to assume that both signs indicate the same or economically linked commercial origins.Broadly confirming the initial decision, the Board found that (i) Disney’s sign enjoys a normal degree of distinctiveness, (ii) the visual similarity between the signs is low, particularly given the different elements surrounding the identical ‘Mickey’ texts, and (iii) aurally the signs are similar, at least, to an average degree after comparing the pronunciation of the opponent’s mark [mɪki] with the contested sign [mɪki ɪz friː]. Slightly differing from the Opposition Division, the BoA held that the signs are conceptually similar to at least an above-average degree. The Board did not merely focus on the common ‘MICKEY element but also assessed the impact of ‘IS FREE!’. That said, it still concluded that the addition of a phrase suggesting Mickey is liberated, merely prevents the signs from being conceptually identical.
Against this background, and given the identity of the relevant goods, the Board dismissed the appeal, ruling that even if the average consumer can visually differentiate the signs a likelihood of confusion may still arise, particularly because of this high conceptual similarity.
Comment
Most readers will know that Mickey has lost some of its privileges on Public Domain Day 2024, in the US [see IPKat here for a recap], meaning that since 1 January 2024, Mickey, as it appears in Disney’s Steamboat Willie film, is indeed free to some extent. That said, it must be borne in mind that the iteration of Mickey appearing in that movie, i.e., the Steamboat Mickey, is also a registered trade mark. Thus, Disney is still capable of preventing unauthorised third parties from using that figure in certain contexts, namely, to indicate the commercial origin of goods and services.
While the applicant did not include the Steamboat Mickey in his sign, he attempted to rely on this public domain narrative: according to him, consumers would understand the phrase ‘Mickey is free!’ as a reference to the expiration of the copyright over the 1928 Steamboat Mickey, rather than a brand extension. If the relevant public of the goods on which the “MICKEY IS FREE!” sign appears were IP lawyers, the applicant might have had a valid point as copyright enthusiasts, such as this Kat herself, may immediately think about the expiration of an almost century-long copyright protection over the Steamboat Mickey, upon seeing that phrase. However, it is highly unlikely for the average consumer of hoodies and T-shirts to be aware of this legal phenomenon, let alone think about it when they encounter the phrase. Moreover, as the BoA rightly emphasised, it is not the phrase ‘Mickey’ or ‘Mickey Mouse’, but a certain depiction of the cartoon character that has entered the public domain. “MICKEY” remains a valid trade mark owned by Disney and therefore, any latter sign that creates a likelihood of confusion with that trade mark should be refused registration under Article 8(1)(b) EUTMR.
Against this backdrop where the so-called liberated Mickey cannot be used as freely as one might expect, the Board’s conclusion seems reasonable. Nevertheless, the BoA’s assessment of conceptual similarity leaves some room for criticism. Although it is not denied that the name Mickey immediately brings Walt Disney to mind, when the applicant’s sign is considered in its entirety, one can question whether ‘Mickey is free!’ would be a message that Disney might give, or is a slogan associated with it. It is not a quote from a Mickey Mouse movie or a phrase frequently appearing on Disney merchandise [Merpel: Hmm, you mean as opposed to ‘Dobby is free!’?]. It is thus not clear why the addition of ‘is free!’ to the “MICKEY” mark solely allows the applicant to avoid conceptual identity, instead of giving a new meaning to Disney’s earlier trade mark, thereby putting a considerable conceptual distance between the two signs. This seems to be an under-explored point in the BoA’s decision, as a finding of a lower degree of conceptual similarity might have led to a different outcome, where the visual similarity was low, the aural similarity was average, and the earlier mark enjoyed only a normal degree of distinctiveness.
Against this backdrop where the so-called liberated Mickey cannot be used as freely as one might expect, the Board’s conclusion seems reasonable. Nevertheless, the BoA’s assessment of conceptual similarity leaves some room for criticism. Although it is not denied that the name Mickey immediately brings Walt Disney to mind, when the applicant’s sign is considered in its entirety, one can question whether ‘Mickey is free!’ would be a message that Disney might give, or is a slogan associated with it. It is not a quote from a Mickey Mouse movie or a phrase frequently appearing on Disney merchandise [Merpel: Hmm, you mean as opposed to ‘Dobby is free!’?]. It is thus not clear why the addition of ‘is free!’ to the “MICKEY” mark solely allows the applicant to avoid conceptual identity, instead of giving a new meaning to Disney’s earlier trade mark, thereby putting a considerable conceptual distance between the two signs. This seems to be an under-explored point in the BoA’s decision, as a finding of a lower degree of conceptual similarity might have led to a different outcome, where the visual similarity was low, the aural similarity was average, and the earlier mark enjoyed only a normal degree of distinctiveness.
Image credit: ChatGPT
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