TODAY'S ECJ DECISIONS

Two decisions from the ECJ.

Today the ECJ delivered its decision in Case C-361/04 P Ruiz-Picasso v OHIM. The case is an appeal that has worked its way up from OHIM against a decision that an application for PICARO for vehicles was not likely to be confused with the earlier PICASSO CTM, also registered for vehicles and owned by the estate of the artist Pablo Picasso. The opposition has always hinged on the degree of importance that should be given to the fact that the term PICASSO is well known to the public as the name of the famous artist. Before the ECJ, the Picasso Estate argued first that the conceptual difference between two signs cannot be found to be increased on account of the fact that the meaning of one of them is clear and specific so that it can be grasped immediately by the public concerned (as the lower tribunals and the Advocate General had found). They also argued that since the confusion analysis must take place within the context of the goods for which the mark is registered and applied for, the meaning of PICASSO as a famous artist should not have been relevant.

The ECJ rejected the appeal.

Famous names and the likelihood of confusion assessment

* The CFI had not erred in finding that, where one of the compared signs has a clear meaning, any conceptual differences can displace any visual and aural similarities. In any event, OHIM had found the degree of phonetic similarity between the two marks to be relatively low.

*The appellants were wrong to argue that the CFI had not taken the type of goods at issue into consideration. A reading of the CFI’s judgments showed that they clearly had taken this into account.

Post-sale confusion etc.

*The CFI had not erred in taking into account the fact that consumers would pay a particularly high level of attention when purchasing the CTM applicant’s good since they were high technology motor cars, and that this high level of attention would make confusion less likely.

*The fact that consumers might pay less attention to the goods at a point before or after their sale does not preclude courts from taking into account the high level of attention that consumers pay to the goods at the moment of their sale. Requiring courts to only look at the lowest level of attention that consumers paid to the goods in question would conflict with the need to pay attention to the category of goods in question when conducting the confusion analysis.

*It would be unreasonable to expect the authority conducting the comparison of marks to establish, for each category of goods, the consumer’s average amount of attention on the basis of the level of attention which he is capable of displaying in different situations.

*This approach did not conflict with the ECJ’s comments in Arsenal v Reed regarding post-sale confusion. The Arsenal court had in no way expressed a general rule from which it could be inferred that, for the purposes of an assessment of the likelihood of confusion within the meaning of Article 5(1)(b) of Directive 89/104 or Article 8(1)(b) of Regulation 40/94, there is no need to refer specifically to the particularly high level of attention displayed by consumers when purchasing a certain category of goods.

The IPKat says that this decision has serious ramifications for those who own trade marks corresponding to the names of well-known people. It is clear that the person’s name will benefit from a more limited scope of protection than other marks because its well-known status will often displace any likelihood of confusion caused by visual and phonetic similarity between the name and later marks.

The ECJ also refused an appeal in Case C-173/04 P Deutsche SiSi v OHIM regarding the registrability of Deutsche SiSi's pouch for drinks. The CFI had conducted the distinctiveness analysis correctly, examining whether that shape of container was commonly used at present, and only including an examination of whether it was likely to be used in the future for the sake of completeness. Moreover, the CFI had been correct in paying little attention to the interests of competitors since its decision was based on lack of distinctiveness of the mark.