Paint maker Manders didn’t get the consent of Pablo Picasso’s estate before applying to register PICASSO for paint. Needless to say, the iconic artist’s descendants opposed the application and the IPO Hearing Officer has now pronounced. Stephen Groom reports on the verdict.
Topic: People in advertising
Who: The Picasso Estate and Manders Paints
When: February 2009
Where: UK Intellectual Property Office
Law stated as at: 30 March 2009
What happened:
The Estate of painter Pablo Picasso opposed an application by Manders Paints to register PICASSO as a trade mark for ….paints.
The case came before the Hearing Officer of the UK Intellectual Property Office. The Estate relied principally on its registration of PICASSO as a Community Trade Mark in respect of vehicles. This had been for some time exclusively licensed to Citroen.
The Estate argued that in the circumstances the Manders application should be thrown out because:
- the PICASSO brand had a reputation in the EU and Manders' use of it on its paints would without due cause take unfair advantage of or be detrimental to the brand's distinctive character or repute (s. 5.3 of the Trade Marks Act 1994 or "TMA");
- for Manders to use the PICASSO brand in respect of paints would amount to a "passing off" (s. 5.4 (a) of the TMA);
- the Manders application had been filed in bad faith; and
- the PICASSO brand was "well known" in the UK and Manders' use of it would be likely to cause confusion.
Did the PICASSO brand have a "reputation" in the UK?
The evidence showed £19.5m of advertising spend by Citroen behind the brand over the four years prior to Manders filing their application and sales of over 170,000 Citroen PICASSO vehicles. On this basis, the "reputation" argument was a shoe-in so far as cars were concerned.
Next up was the question of whether a Manders PICASSO brand for paints would "without due cause" take "unfair advantage" of the PICASSO CTM in respect of cars.
On this point, the key issue, as underlined by cases such as Adidas Salomon v Fitness World (2004) ETMR 10, was whether the relevant public would draw a "link" between the two brands. If they would, then the way would be clear for the artist's estate to establish "unfair advantage."
The Hearing Officer certainly felt that a link would be drawn between Manders PICASSO paint and Picasso the artist, but because cars and paint were such dissimilar products, a link between PICASSO paints and PICASSO cars was felt to be a link too far. On top of this, no evidence had been produced to show that Manders would derive any unfair advantage, so the opposition on this count failed.
It was noted in passing that of course Citroen, like all car makers, sold touch up paint but there was no evidence that this was sold under the PICASSO sub brand, so no line of argument for the estate here.
Picasso passing off?
Under s. 5(4) (a) of the TMA, a brand cannot be registered if its use in the UK is liable to be prevented by virtue of any rule of law (in particular the law of passing off) protecting an unregistered trade mark."
Here the estate of arguably the greatest painter of the 20th century sought to argue that Manders' use of PICASSO for paint would be an actionable passing off.
Again it was no go.
The estate had to establish that as of the date when Manders applied to register PICASSO for paint, the goodwill that had been built up in the UK by advertising and sales of Citroen cars was such that its use for paint would amount to a damaging misrepresentation that the paint was commercially linked with not Citroen but with the claimants, the PICASSO estate.
On this point, clearly Citroen's advertising and sale of PICASSO cars had built up significant goodwill in the business done by Citroen under the PICASSO name.
But did this goodwill extend to the estate's activities under the PICASSO brand so that punters would believe the paint had come from the estate?
No evidence was adduced to show that this was the case, so no basis for a finding of misrepresentation and therefore no basis for a finding of passing off.
Bad faith argument run by estate
The estate next sought to argue that by applying to register PICASSO for paint knowing full well of the Citroen product, Manders had acted in bad faith and should not be entitled to a registration.
The Hearing Officer accepted that actual dishonesty did not need to be found for "bad faith" to apply, rather behaviour that was contrary to normally accepted standards of honest conduct.
Here the estate asserted that Manders should have known that they needed a licence. Great play was made of the "get up" of the Manders PICASSO brand bearing as it did allegedly close similarity to the artist's signature.
But this cut no ice with the Hearing Officer. Given he had already found that at the time of Manders' filing of its application the PICASSO brand had no "broad commercial reputation" beyond cars, he could not see how it was "bad faith" on the part of Manders not to seek permission from the estate before applying to register it for paint.
ELVIS PRESLEY and PICASSO similarities?
The estate's last throw of the die was an argument based on s. 56 of the TMA.
Here, even if it is not a registered trade mark at the relevant time, a trade mark that is "well known" in the UK can be protected by the grant of an injunction preventing unauthorised use if the defendant's use of it is "likely to cause confusion."
The Hearing Officer referred to his earlier finding that "the reputation enjoyed by the Picasso estate is in respect of the repute of the artist Pablo Picasso and not a reputation as the trade origin of goods except for vehicles."
He drew from the Court of Appeal's finding in the case of Elvis Presley Enterprises Inc v Sid Shaw Elvisly Yours (ELVIS PRESLEY Trade Marks) [1999] R P C 567 CA. The Appeal judges held there that "a name unique to a particular person does not, of itself, have distinctive character as a trade mark."
This was the case here, the Hearing Officer determined. The relevant sector of the public was the consumer for paints.
Clearly they will have a good degree of knowledge and recognition of the artist Picasso, but there was no evidence to illustrate that these same consumers had knowledge and recognition of PICASSO as a trade mark.
Accordingly there was no evidence to support the proposition that PICASSO was a trade mark qualifying for protection as a "well known" mark under s.56 of the TMA and with that last argument falling away, the estate's case was exhausted with an order to pay Manders their costs assessed at £1,850.
Why this matters:
This is a first instance decision and given its potentially pivotal importance to the Picasso estate, it will be no surprise if it goes to appeal.
Subject to that, the case underlines the challenges faced by those looking to police the use of famous names that have first and foremost been associated with a particular individual rather than any product.
The Picasso estate has found, just as the estates of Princess Diana and Elvis Presley have done before it, that assertions of misrepresentation, confusion and taking unfair advantage will simply not get traction without clear evidence of a link in the mind of the consumer between the famous name and the estate as a source of commercially sold products.
