PICASSO mark owner fails in opposition to PICARO

European Union

In Ruiz-Picasso v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has rejected an opposition brought by the family of the famous painter Pablo Picasso against the registration of the Community trademark PICARO for motor vehicles and their parts, in spite of the family’s earlier PICASSO mark for the same goods.

DaimlerChrysler AG applied to register PICARO as a Community trademark for vehicles, parts thereof and omnibuses in Class 12 of the Nice Classification. Picasso’s successors filed an opposition on the basis of their earlier Community trademark PICASSO for goods in Class 12. The OHIM Opposition Division rejected the opposition, as did the Board of Appeal.

On further appeal, the CFI upheld the decision. It rejected the Picasso family’s contention that the Board of Appeal had breached Article 74(1) of the Community Trademark Regulation by taking into account facts that had not been submitted by the parties. The CFI found that Article 74(1) allows facts to be considered where they (i) are either well-known or likely to be known by anyone, or (ii) may be learnt from generally accessible sources. Thus, the CFI upheld the Board of Appeal’s assumption that the average, reasonably observant consumer is sufficiently perceptive and cautious when buying motor vehicles so as not to confuse trademarks.

Turning to the claim of confusing similarity, the CFI held that while the PICARO and PICASSO marks share a low degree of visual and phonetic similarity, they do not bear any conceptual similarity: picaro means ‘rogue’ in Spanish, while Picasso has for the relevant public a clear and specific semantic content, that is, the name of a famous painter who has no connection with the goods protected. The CFI concluded that consumers would perceive this name principally as a trademark. Due to the price and technological nature of the goods concerned, consumers would be very wary when making a purchase meaning that there was no likelihood of confusion.

This decision is somewhat surprising as it does not take into account the increased protection normally afforded to well-known or even renowned trademarks. While it is true that consumers pay much more attention to a trademark when purchasing a car or other expensive goods, the PICARO mark also applies to other products (ie, parts) to which consumers may pay less attention.

Pilar López Valdés, Grau Baylos & Angulo, Madrid

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