The boundaries between the public domain and trademark law: the “MICKEY IS FREE” case
06 Aug 2026
EUIPO Board of Appeal, May 21, 2026
The ruling of the First Board of Appeal of the EUIPO of May 21, 2026, offers an important clarification on the relationship between the expiration of copyright and the protection of trademarks. The ruling indeed upheld the refusal to register the word trademark application “MICKEY IS FREE!”, reaffirming the clear autonomy of trademark protection with respect to the expiration of copyright.
The dispute arose in August 2024, when Mr. Karl Erik Dahl filed the trademark application “MICKEY IS FREE!” for clothing products in class 25. Disney Enterprises, Inc. filed an opposition based on its earlier figurative trademark “Disney MICKEY & CO.” registered for the same class of goods. The Opposition Division upheld the opposition, considering that the English-speaking public of the European Union could perceive “MICKEY IS FREE!” as a variant or a sub-brand authorized by Disney.
The EUIPO Board of Appeal fully upheld the first-instance decision. In this context, the applicant sought to defend the trademark application “MICKEY IS FREE!”, arguing that the public would link the slogan to the 1928 Mickey Mouse short film entitled “Steamboat Willie”, which entered the public domain in the United States in 2024. In this regard, the Board specified that the expiration of the copyright on the original work does not affect the validity of the trademarks registered for the signs “Mickey” or “Mickey Mouse”.
The EUIPO Board of Appeal therefore rejected Mr. Dahl’s defence, emphasizing that the average user does not possess intellectual property law knowledge such as to be able to connect the words “MICKEY IS FREE” to the “Steamboat Willie” short film that entered the public domain. On the contrary, reading the word “Mickey”, which enjoys relevant notoriety and an immediate cultural hook, the English-speaking public would immediately think of the famous fictional character.
From a comparative point of view, in the present case the Board of Appeal found that the conceptual similarity was above average, since both trademarks refer to the immense notoriety of the same fictional character. Regarding the likelihood of confusion, it was clarified that Disney is not required to prove a pre-existing sub-branding model linked to the word “FREE!” as the identity of the products involved caused the public to associate the trademark application to a promotional line authorized by Disney.
The ruling confirms how the expiration of copyright on a work does not imply the freedom to use the related distinctive sign on the market. The protection guaranteed by trademark Law remains an autonomous safeguard against the risk of confusion and association, requiring commercial operators to make a careful assessment before using famous icons that have entered the public domain.
Giulia Ravegnani Pandolfo
