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Tuesday, 22 June 2004


The Court of First Instance (CFI) has just published its ruling in Case T-185/02, Claude Ruiz-Picasso and others v OHIM. The Picassos, ably represented by leading European trade mark lawyer Charles Gielen (NautaDutilh), opposed an application by DaimlerChrysler AG to register as a Community trade mark the word PICARO for motor vehicles and their parts. The opposition, based on the Picassos' registration of the word mark PICASSO for various vehicles, was dismissed by OHIM's Opposition Division and then by the Board of Appeal, following which the Picasso clan appealed to the CFI. All three tribunals were united in their agreement that there was no likelihood of confusion between the words PICASSO (an immensely famous artist) and PICARO (an old word meaning "rogue"). The CFI affirmed that, whatever the European Court of Justice might have said about famous marks being entitled to greater protection against confusion than less well-known marks, that principle certainly could not apply here where Picasso's name was so widely-known that people wouldn't mistake a word such as "picaro" with it. The CFI said:

"57 The word sign PICASSO has a clear and specific semantic content for the relevant public. Contrary to the applicants’ submissions, the relevance of the meaning of the sign for the purposes of assessing the likelihood of confusion is not affected in the present case by the fact that that meaning has no connection with the goods concerned. The reputation of the painter Pablo Picasso is such that it is not plausible to consider, in the absence of specific evidence to the contrary, that the sign PICASSO as a mark for motor vehicles may, in the perception of the average consumer, override the name of the painter so that that consumer, confronted with the sign PICASSO in the context of the goods concerned, will henceforth disregard the meaning of the sign as the name of the painter and perceive it principally as a mark, among other marks, of motor vehicles."
It added:
"61 Moreover, the applicants are wrong to rely, in the present case, on the case-law which states that trade marks which have a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (SABEL, cited in paragraph 35 above, paragraph 24, and Case C-39/97 Canon [1998] ECR I‑5507, paragraph 18). That the word sign PICASSO is well known as corresponding to the name of the famous painter Pablo Picasso is not capable of heightening the likelihood of confusion between the two marks for the goods concerned".
The IPKat thinks this decision is absolutely correct. It is an absurd fiction to suggest that well-known marks are more in need of protection against likelihood of confusion if the very fact of their well-known nature causes them to stand out in the eyes of the relevant consumer as conveying the sort of powerful message or image that "Picasso" does. The public is more likely to confuse MUFFINS with MUGGINS for sausage meat than PICASSO with PICARO for motor vehicles simply because it has heard of neither of them.

Real Picassos here and here; fake Picassos here and here
The IPKat's favourite Picassos here, here and here; the IPKat's favourite fake Picasso here

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