Since 1998, DaimlerChrysler has been trying to register PICARO as a Community Trade Mark for cars. Since 1998, the Picasso estate has been trying to stop them. Now the last appeal has been heard.
Topic: Brands
Who: DaimlerChrysler and the Picasso family
Where: The European Court of Justice, Luxembourg
When: December 2005
What happened:
The European Court of Justice in Luxembourg adjudicated on a third appeal in a long-running dispute between the Picasso family and DaimlerChrysler. The bone of contention was a 1998 application by DaimlerChrysler to register the trademark "PICARO" as a community trademark ("CTM") in respect of "automobiles and their parts, buses." The CTM system allows a brand owner to register a brand, on a one-stop basis, in all 25 EU member states.
At that time the Picasso family already owned a CTM registration for the word "PICASSO". This covered identical goods, in other words "automobiles and their parts, buses". The mark had already been licensed to one of DaimlerChrysler's competitors, Citroen, and the famous artist's family claimed there was too much phonetical and visual similarity between PICASSO and PICARO, thus giving rise to an unacceptable risk of confusion.
"Enhanced distinctiveness" argument
The Picasso Estate also argued that the Court should take into account the "enhanced level of distinctiveness" which the Picasso name should enjoy, bearing in mind the reputation of the artist's name. The argument here was that because of this enhanced distinctiveness, the Court should be more astute to ban the use of brands which were to some extent similar but might not in other circumstances be regarded as confusingly so.
As with the previous appeals, the ECJ rejected the Picasso Estate's arguments.
The pronunciation of the two words was markedly different, the Judges felt, with the double "s" sounding utterly dissimilar to the single "r" sound. In addition, the two words conjured up different images. "Picasso" brought to mind the beret-wearing painter, while "Picaro" was understand by native Spanish speakers to refer to a character from Spanish literature.
As for the "enhanced distinctiveness" argument, the Court rejected this on the basis that whatever enhanced reputation the artist enjoyed, it did not extend to automobiles.
Why this matters:
Prior to the ECJ handing down its judgment, the Spanish Advocate General Colomer had in his opinion (customarily published in advance and not necessarily determinative of the ECJ's final judgment) criticised the commercialisation of the great artist's name, expressing dismay that it should be caught up in such a "banal legal matter". He counselled against the "immoderate use" of the name for use for commercial ends, although clearly the Picasso Estate would have disagreed.
The lesson for those contemplating the use and registration of personalities' names as trademarks is similar to that coming out of previous recent cases involving marks such as ELVIS PRESLEY and DIANA, PRINCESS OF WALES.
Can it designate origin?
Where the name of a personality, alive or dead, is already famous at the point that an application for a trademark registration is filed, the trick is to be able to persuade the registering authorities that, at that point in time, the brand is capable of acting as an indication of the origin of the goods to which it is applied.
For instance, an application to register PICASSO as a trademark for posters would encounter serious difficulties because it would simply be seen by the marketplace as saying what the product actually is, rather than indicating its origin.
Life doesn't get any easier for goods and services which are significantly distanced from the context in which the celebrity is known. This case is in that category, and although the Picasso family seems to have been successful in originally registering PICASSO for automobiles, this judgment shows that the protection conferred by the registration is limited.
