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.
