February 2006
Abstract attempt to prevent competing car name fails for Picasso family
The family of Pablo Picasso have recently failed again in their attempt to prevent the mark “Picaro” being registered as a CTM.
DaimlerCrysler filed an application for “Picaro” in class 12 for motor vehicles in a move that the Picasso family considered to be too close to their trade mark use of “Picasso” resulting in their opposition proceedings. The Picasso name and signature is already licensed to Citroen for use on their Xsara range which use would doubtless have increased the chance of confusion between the Daimler mark in the eyes of Picasso’s family.
The family based its opposition on a class 12 CTM registration for “Picasso” in 2001 which OHIM found not to be valid. The matter was then appealed to the ECJ.
It was however held that the marks were different enough since although the marks looked and sounded similar they are conceptually different i.e. the consumer can identify the difference between the brand and its image despite the mark looking or sounding similar. The court held that a conceptual difference is especially important when "the degree of attention of the relevant public is particularly high as regards goods like motor vehicles" i.e. the consumer has a higher level of ability to differentiate between brands with a product like a car.
Briffa Comment:
The decision went on to suggest that where an applicant’s mark resembles a famous name they may find it harder to prove that their mark is highly distinctive and therefore registrable as the level of recognition of a mark is greater where that mark includes a famous name. However in this case the name “Picasso” as a famous name was not deemed to be famous mainly for cars despite the Citroen licence. Had the “Picaro” mark been used for art products then the result of the matter may have been somewhat different.
Sarah Jeffery
sarah@briffa.com