EUROPEAN PERSPECTIVES

Picasso draws a blank

The last salvos echoed in the war between the Picasso estate and Daimler-Chrysler AG in January, when the ECJ handed down its ruling in Claude Ruiz-Picasso & Others v. OHIM (Case C-361/04 P). In the end, the commercial feud over the name of one of the 20th century’s most iconic figures offended the court and failed to secure the sought-for ruling that Picasso’s fame justified protection against the risk that some people might be confused, even though actual purchasers would not.

 

Background

The dispute began in August 1999, when the estate of the late artist filed opposition to Daimler-Chrysler’s Community Trade Mark application for PICARO in Class 12 for “vehicles and parts therefor, omnibuses.”

The Picasso estate had reasons going beyond mere principle. It had itself registered PICASSO in Class 12 and licensed another automobile manufacturer, Citroën, to use PICASSO in respect of its Xsara range. Gradual erosion of the late artist’s image and the risk of it being supplanted by associations with cars was not, therefore, its concern. It was fighting instead to safeguard its monopoly on the commercial value of a famous name.

At first instance, OHIM ruled that the marks were not similar and rejected the opposition. The Board of Appeal affirmed, holding that the average consumer of vehicles was sufficiently attentive to perceive the differences between the marks.

On a further appeal, the Court of First Instance acknowledged that there were some minor visual and phonetic similarities between PICASSO and PICARO, which might form a basis for holding the marks similar.

 

The Critical Impact of Conceptual Differences

The estate’s success was incomplete, however. The CFI found that although there were similarities between the marks, they were overridden by the clear semantic content of PICASSO. PICASSO was internationally famous as the name of the late painter. This contrasted starkly with PICARO, which meant nothing outside the Spanish-speaking world. The CFI ruled that although the PICASSO name was famous, in the particular circumstances of this case that fame did not render confusion more likely. Conceptual differences here overrode the similarities.Similar Marks On appeal to the ECJ, the estate challenged the legality of the CFI’s approach to conceptual differences. In line with prior decisions, the CFI had held that conceptual differences can counteract visual and phonetic similarities where at least one of the marks has a clear and specific meaning that the public is capable of grasping immediately. As PICASSO clearly denoted the late painter, the CFI held that it had such a meaning. PICARO, it held, had no meaning at all except in countries where Spanish was spoken.

Before the ECJ, the estate argued that the mere acquisition of a meaning in a context other than that of the claimed goods should not result in an increase in conceptual differences between marks that might otherwise be conceptually neutral (for example, where neither has a meaning). It reasoned also that the CFI should have considered the nature of the goods when deciding what, if any, conceptual meaning the marks had. If the case were remitted to OHIM, the estate might then have been able to argue that PICASSO had no meaning in respect of motor vehicles, as opposed to art. If the reputation of PICASSO as the painter were thus disregarded, the outcome of the case might be different as nothing would weigh against the visual and phonetic similarities.

The Court, however, rejected all these arguments. It affirmed the CFI’s approach, ruling that it had been right to consider conceptual similarity without regard to specific goods. The nature of the goods, the ECJ ruled, becomes relevant only after a finding of similarity of marks has been reached. It is the next necessary step in determining whether there is a likelihood of confusion. The estate, however, had not travelled that far.

Opposition was based on the estate’s earlier CTM registration for goods including “vehicles” in Class 12. The estate pleaded a likelihood of confusion under Article 8 (1) (b) CTMR. As the goods in question were identical, in order to win the estate needed to show that the trade marks were similar and that, taking all relevant factors into account, it was likely that the average consumer would be confused.

 

Who, Exactly, Must be Confused?

The estate nonetheless also attacked the CFI’s reasoning on likelihood of confusion. In particular, it challenged whether the CFI had considered the right people in determining whether the average consumer would be confused.

The estate argued that the CFI had wrongly restricted its assessment to the average consumer of motor vehicles at the point of purchase. The exercise of great care and attentiveness is normal when considering a purchase of such magnitude. The estate, however, asserted that others, too, would come into contact with the PICARO mark, perhaps seeing an advertisement or an actual PICARO car, in circumstances where such care and attention is not the norm. The estate drew from the ECJ’s decision in Arsenal v Reed in arguing the relevance of post-sale confusion. The CFI, the estate reproached, should have considered the impact of the marks on the less cautious as well as the careful and prudent.

This line of argument was also rejected. The ECJ held that in Arsenal it had only observed that scope for post-sale confusion might confirm a likelihood of confusion at the point of sale. There was no general principle that post-sale confusion was relevant to determining a likelihood of confusion under Article 8 (1) (b). The CFI had been right to consider the matter from the point of view of prospective purchasers only. With that, the appeal was dismissed.

 

Comment

The Advocate-General, in his preceding opinion, had harsh words for the estate’s efforts to monopolise and exploit the commercial value of Picasso’s name. He perceived a risk that the painter’s legacy would be lost and his name associated only with cars and other goods. One might sympathise with this view, but approve or disapprove, it is unarguable that the names of the famous “sell.”

Since the ECJ decided Canon, fame has normally been regarded as tending to increase, rather than decrease, the ambit of a trade mark’s protection. This case is an interesting example, however, of fame having the opposite effect. It is by no means the only one. Too much fame resulted in the band Linkin Park losing an appeal last year against the refusal of its application to register its name as a trade mark in the U.K., when it was held that the meaning as a band name had effectively supplanted the inherent distinctiveness of the mark. The ruling in PICASSO further challenges the received wisdom that greater fame results in a stronger mark and wider protection.

The ECJ’s confirmation that lower court rulings on conceptual differences have led to the adoption of the correct approach is heartening, however. Also welcome is the brightline rule that conceptual differences form part of the assessment of similarity of marks; the nature of the goods is rightly relevant to the separate question of likelihood of confusion (as well as, more obviously, to similarity of goods), and the ECJ was right to resist an invitation to muddy the waters.

The Picasso estate ran an intriguing argument as to the relevant consumer for the purposes of confusion. Certainly some people not intent on buying a car might have been confused had the marks been regarded as similar, since they would spend less time on the matter. There might even be a kind of “initial-interest confusion,” where enquiries are made on the basis of a mistaken initial assumption as to origin, whereupon the doubts would be dispelled. The relevance of this sort of confusion to Internet domain name disputes has long been recognized. The essential function of a trade mark is different to that of a domain name, however, and it is not surprising that the ECJ reached the result that it did.

Arguably, the ECJ itself stirred up this controversy by saying more than was necessary in Arsenal v Reed. In that case, post-sale confusion was not relevant because the ECJ had held that the essential function of the trade mark, namely to indicate origin on the marketplace, had already been performed at the point of sale. Referring to it was unnecessary, and ultimately troublesome, embellishment.