Picasso name close to being generic, rules registrar
In Picasso Fashion Ltd v Picasso, the trademarks registrar has rejected an opposition to the registration of the mark PICASSO (stylized).
Picasso Fashion Ltd (PFL) applied to register PICASSO for goods, in particular clothing, footwear and headgear, in Class 25 of the Nice Classification. It has been using the mark for a number of years, selling its goods through a variety of stores bearing the Picasso name. Claude Ruiz Picasso, the owner of rights in the artistic works of Pablo Picasso, opposed registration on the grounds that the mark was:
- immoral or contrary to public policy;
- a surname that had not acquired distinctive character; and/or
- identical or similar to the name of another person and was likely to confuse the public or cause unfair competition.
The main question examined by the registrar was whether it is possible to use the name of a famous deceased person as a trademark, without receiving permission from the holders of his proprietary rights, where the fame of such person does not derive from his trade in the goods or services covered by the mark at issue. In ruling on this question, the registrar made the following findings:
- While PFL has been using the mark with respect to clothing, footwear and headgear, Picasso did not sell any consumer goods bearing his name throughout his life but only sold artworks bearing his name. The difference between Picasso's field of work and PFL's goods is so significant that it eliminates the risk of confusion.
- The use of Picasso's name for casual consumer goods does not damage Picasso's dignity and work, and does not contradict public policy.
- Picasso's name has fallen into the public domain. The wide range of commercial uses of this name for goods or services unrelated to Picasso's field of work indicates that this name is close to being generic (there were over a hundred examples of use of PICASSO in PFL's affidavit). This places a burden on an applicant for this mark to prove sufficient acquired distinctiveness but does not allow the opponent to claim any benefit in this regard.
- PFL has proven sufficient goodwill to distinguish between its mark and the artist's name. PFL's mark thus satisfies the threshold of requisite distinctiveness.
- The discretionary ground under Section 12 of the Trademarks Ordinance [New Version] 1972, whereby an application may be rejected if the mark is (i) identical or similar to the name of another person, and (ii) likely to confuse the public or cause unfair competition, does not apply in this case. Such grounds for rejection relate to the registration of a person's full name (ie, first name and surname) and where such person is alive.
The trademark registrar therefore rejected the opposition and accepted the PICASSO mark for registration.
Neil Wilkof and Anat Paz, Herzog Fox & Neeman, Tel Aviv
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