I Don’t Like It… Picasso – Pablo Picasso’s great-grandson fails in trade mark opposition

A trade mark opposition brought by Florian Ruiz-Picasso (great-grandson of famous artist Pablo Picasso) (the “Opponent”) against UK trade mark application no. UK00003882180 for ‘PICASSO’ in class 33 (the “Application”) has failed.

Background

The Application, filed by Picasso Group Co., Ltd (the “Applicant”) covers whiskey in class 33.

The Opponent relied on his UK registered trade mark no. UK00801522721 for ‘Florian Picasso’ in class 32 covering beers, soft drinks, mineral and aerated waters, and energy drinks.

The opposition was based on s.5(2)(b) of the Trade Marks Act 1994, i.e. likelihood of confusion due to similarity of marks and identity or similarity of goods.

Decision

Comparison of goods

The hearing officer compared the goods of both marks and was of the view that soft drinks serve a different purpose to whiskey in that they are intended to quench thirst, whereas whiskey is not and would typically be drunk in small quantities. She said consumers generally drink whiskey to experience the effects of alcohol and/or enjoy the flavour of the drink. The hearing officer also highlighted that whiskey is targeted at adults whereas soft drinks are targeted at everyone, albeit there is some overlap. The hearing officer took a similar approach in the comparisons of mineral and aerated waters and energy drinks. In each case, the goods were found to be dissimilar.

When comparing whiskey and beers, the hearing officer found there to be an overlap in purpose, trade channels and targeted users. However, she said competition between the goods was low and there was not a complementary relationship between the goods. As such, the hearing officer found whiskey and beers to be similar to a low degree.

Comparison of marks

In comparing the marks, the hearing officer was of the view that the name Picasso was not a common surname in the UK, and neither was Florian a common forename. She said they both contributed to the overall impression of the mark, with Picasso possibly slightly greater, if at all.

From a visual standpoint, the hearing officer said the marks were similar to a medium degree, given the difference in length and number of words, albeit the second word in the Opponent’s mark was identical to the Applicant’s mark. The aural comparison largely followed the same analysis. As such, similarity between the marks was found to be of a medium degree.

Conceptually, the hearing officer said that both marks would be interpreted as names. Despite the Opponent’s family ties, the hearing officer did not think the Opponent’s mark would convey a clear message that Florian Picasso was a member of Pablo Picasso’s family. Therefore, the marks were found to be conceptually dissimilar.

Likelihood of confusion

Given that ‘PICASSO’ was not found to be the dominant part of the Opponent’s mark, the hearing officer said that ‘FLORIAN’ would not be overlooked, especially given both names are unusual in the UK. The hearing officer found the differences between the marks were such that they would not be mistaken for each other. Therefore, there was no likelihood of direct confusion.

The hearing officer also considered indirect confusion. She opined that there was no evidence that the ‘PICASSO’ element of the Opponent’s mark had a high distinctive character, such that the average consumer would assume that no other undertaking would use it in a trade mark. There was nothing to suggest that the Picasso family had any role in owning or promoting trade marks containing that element. For the same reasons, it was not logical to assume the Applicant’s mark would be perceived as a brand extension, particularly given the low degree of similarity between the goods.

There was found to be no likelihood of indirect confusion, and the opposition therefore failed.

Comment

This is an interesting case because it demonstrates that a famous name does not necessarily carry huge weight in trade mark proceedings if there are other dominant elements to the trade mark that is being relied on (particularly if those elements are unusual or not familiar to the average consumer), and the goods or services in issue are found to be dissimilar.

In such cases, evidence demonstrating that the famous name has an enhanced reputation for the goods covered is vital and ensures the mark is not assessed on only its inherent distinctiveness.

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