PICASSO: MORE DETAILS

The AG's decision in Picasso still isn't out in English, but friend of the IPKat Udo Pfleghar has come to this rescue. He writes:

Having read the opinion of the AG, there are a number of interesting points raised in it, not the least of which are in the "Brief final comments" you have mentioned:

In these, the AG cites the estate of Pablo Picasso as having pointed to the importance and frequency of the use of surnames as trade marks. They also noted the importance of merchandising, i.e. the use of famous marks for products which are in no way related to the original goods.

The AG comments this by saying that he has repeatedly stressed that the real purpose of trade mark law is the protection of the accuracy of the information a registered trade mark conveys about the origin of particular goods - quite irrespective of other functions.

The AG also points out that a trade mark creates an exclusive position which makes it possible for proprietors of the mark to stop others from using it. This ex lege protection is all the more justified if a person's own surname is concerned as no one is safe from "parasitism".

Nevertheless, the AG adds two clarifications. Firstly, it is not possible to simply transfer the greater scope of protection availed to marks of high distinctiveness to areas which are unrelated to the area in which such distinctiveness has been acquired. The reason is that it is - initially - highly doubtful whether the mark would serve its function of indicator of origin in that area. Secondly, the AG states that there is a certain public interest in maintaining the names of great artists as universal cultural heritage in order to prevent damaging their work through trivialisation. The AG considers it saddening if the fate of names such as Renault, Ford, Opel or Porsche, the origin of which is no longer known to the public, would also be shared by the name Picasso in the none too distant future.

As far as the legal claims of the case are concerned, the AG rejects all four of them, inter alia due to the fact that the claims concerned questions of fact instead of law:

The argument of the CFI that conceptual content outweighed visual and phonetic similarities could not be faulted. The CFI had correctly decided which of the factors was the dominant one in the particular case and not treated this as a rule which was valid in absolute and a priori.

The argument that the CFI had neglected the increased scope of protection of marks with above average distinctiveness was also found to be incorrect. Instead the CFI had ruled that the name PICASSO could not claim such an increased scope of protection as a brand for cars. Therefore there is no reason to consider that the CFI had not dealt with this issue.

On a further point, the AG rejected the claim that the CFI had erred in limiting the relevant time for examining likelihood of confusion to the time of deciding on a purchase rather than extending it to post-sale confusion.

The AG points out that this case cannot be compared to the Arsenal case in which the Court had simply clarified that an infringement was taking place even if there was a sign at the point of sale stating that the goods had not originated from Arsenal. According to the literature, post-sale confusion has no bearing on the decision of likelihood of confusion. Therefore, the AG rejects this claim also.

Finally, where the estate claims that the CFI erred in setting different standards for establishing likelihood of confusion in opposition proceedings on the one hand and infringement cases on the other, the AG clearly states that the CFI at no time spoke of any differences in the examination and that no such differences were applied in the case.

The AG actually used some rather strong wording in his final comments, referring to "unersättliche kaufmännische Habgier" which could be translated as "insatiable commercial greed" against which cultural heritage must be protected.