The Intellectual Property Office (IPO) has rejected a challenge by a descendant of the artist Pablo Picasso to an application to register the word ‘Picasso’ as a trade mark.
A company had applied to register ‘Picasso’ as a trade mark in respect of whiskey under Class 33 (alcoholic beverages). The application was opposed by Pablo Picasso’s great-grandson. He relied on the earlier mark ‘Florian Picasso’, which he had registered in respect of goods and services in various classes, including beers, soft drinks, mineral and aerated water and energy drinks under Class 32. He claimed that the marks were highly similar as they both contained the surname ‘Picasso’. He argued that there was a high degree of similarity between the parties’ goods and thus a high likelihood of confusion between the marks on the part of consumers, including the likelihood of association.
The IPO considered that the average consumer in the UK would understand the term ‘soft drinks’ to refer to cold, frequently sweet, non-alcoholic drinks. While non-alcoholic whiskey was available, it would be drunk in small quantities and not to quench thirst, and the average consumer would not describe it as a soft drink. The company’s whiskey was targeted towards adults, and whiskey and soft drinks were likely to be displayed in different aisles in supermarkets. In the IPO’s view, whiskey was dissimilar to soft drinks. Nor was it similar to mineral and aerated water or to energy drinks.
The IPO considered that there was a low degree of similarity between whiskey and beer. Given the differences in alcohol content and length of the drinks, any competition between the goods would be very slight.
The IPO found that the differences between the marks were such that they would not be mistaken for one another. The names ‘Florian’ and ‘Picasso’ were both unusual in the UK and the IPO did not consider that ‘Florian’ would be overlooked. There was thus no likelihood of direct confusion.
There was no evidence that the ‘Picasso’ element of the Florian Picasso mark had a high distinctive character, such that the average consumer would assume that no other undertaking would use it in a trade mark. Mr Picasso’s argument was based on his membership of the family of Pablo Picasso. However, the ICO had no evidence to indicate that the average consumer was aware of this, and so it was unlikely that they would assume that the company’s mark was a logical brand extension, particularly given the low degree of similarity between the goods. The ICO found that there was no likelihood of indirect confusion.
The opposition having failed, the company’s trade mark could proceed to registration.