Out-Law News 1 min. read
Picasso more famous as a painter than a car, says Advocate General
09 Sep 2005, 1:53 pm
The estate of Pablo Picasso cannot stop DaimlerChrysler using the mark “Picaro,” albeit the Picasso trade mark is licensed to rival carmaker Citroën, Advocate General Damaso Ruiz-Jarabo Colomer told the European Court of Justice this week.
The trustees of Picasso’s estate had objected to the car giant’s use of the trade mark, which it was granted in 2002 by the Office for Harmonisation in the Internal Market. OHIM, which regulates EU trade marks and designs, overruled the estate’s opposition to grant the mark.
According to the estate, the term is too similar to the “Picasso” mark, which it had licensed for use on the Citroën Xsara Picasso in 1998.
The estate took OHIM to court, but lost its case in the European Court of First Instance in June last year, when the Court found that while the two terms were visually similar, they had a low phonetic similarity and were not conceptually similar.
According to the Court:
“The word sign PICASSO has a clear and specific semantic content for the relevant public. Contrary to the applicants’ submissions, the relevance of the meaning of the sign for the purposes of assessing the likelihood of confusion is not affected in the present case by the fact that that meaning has no connection with the goods concerned. The reputation of the painter Pablo Picasso is such that it is not plausible to consider, in the absence of specific evidence to the contrary, that the sign PICASSO as a mark for motor vehicles may, in the perception of the average consumer, override the name of the painter so that that consumer, confronted with the sign PICASSO in the context of the goods concerned, will henceforth disregard the meaning of the sign as the name of the painter and perceive it principally as a mark, among other marks, of motor vehicles.”
Accordingly, the Court of First Instance decided that the conceptual dissimilarity overruled any visual or phonetic similarity that might cause confusion in the mid of the public.
The estate appealed, but Advocate General Colomer, who advises the European Court of Justice, this week issued an Opinion upholding the earlier court ruling. The advice given by Advocates General is not binding but it is usually followed by the European Court of Justice.
