February 2006


In September 1998 Daimler-Chrysler AG filed an application with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (“OHIM”) to register the mark PICARO as a Community trade mark for “vehicles and parts therefore; omnibuses”.

The children and grandchildren of the famous Spanish artist, Pablo Ruiz Picasso, form the ‘Picasso estate’[2] and are the proprietors of the word mark PICASSO, also registered in relation to “vehicles; apparatus for locomotion by land, air or water, motor cars, motor coaches, trucks, vans, caravans, trailers”. In 1999, the Picasso estate opposed the registration of the PICARO mark on the basis of there being a likelihood of confusion with the PICASSO mark.

The Opposition Division of the OHIM found that there was no likelihood of confusion according to Article 8(1)(b) of the Community Trade Mark Regulation No 40/94 and granted registration of the PICARO mark. The Picasso estate appealed to the OHIM Board of Appeal, but their appeal was rejected. The Picasso estate appealed to the Court of First Instance (CFI); their appeal failed.[3] The Picasso estate then requested that the European Court of Justice (ECJ) set aside the CFI decision and annul the OHIM’s decision. After hearing the Opinion of Advocate General Ruiz-Jarabo Colomer, the First Chamber of the ECJ gave their judgment on 12 January 2006. Again the Picasso estate lost their appeal.

In this short case note the author proposes to deal with the decisions of both the Court of First Instance and the European Court of Justice, before making some brief observations on the likely consequences of this case.

The Decision of the Court of First Instance

At issue in this case was whether there was a “likelihood of confusion” between the trade marks PICASSO and PICARO in connection with the relevant goods. In order to assess whether there was a likelihood of confusion the CFI looked at the following three factors:

a) The similarity of the marks;

b) The distinctive character of the earlier mark; and

c) The average consumer’s level of attention.

The similarity of the marks

The CFI found that the PICASSO and PICARO marks were not conceptually similar. It believed that the relevant public would recognise PICASSO as being the surname of the Spanish artist. Indeed, the word PICARO may be known to Spanish speaking persons as being a roguish character in Spanish literature; however it would not generally be known to the non-Spanish speaking section of the relevant public.[4] The Court held that such conceptual differences were enough to counteract the visual and phonetic similarities of the marks.[5]

The distinctive character of the earlier mark

The CFI held that the mark PICASSO did not have a highly distinctive character as a mark for vehicles and was therefore not entitled to any enhanced protection.[6]

The average consumer’s level of attention

The average consumer’s level of attention is relevant when assessing whether or not there would be a likelihood of confusion between trade marks. In some situations[7] this can be assessed before purchase, at purchase and after purchase. The CFI held that in transactions of the nature contemplated in this case however - the sale of vehicles - the level of attention of the average consumer at the point of purchase is high and consequently particular regard should be paid to this.

The findings of the CFI in relation to all three of the above issues (similarity, distinctiveness, level of attention) were challenged by the Picasso estate in the ECJ.

The Judgment of the ECJ

The ECJ upheld the findings of the CFI on all accounts.

The similarity of the marks

The ECJ reiterated the need for a global appreciation of the trade marks in question when assessing whether there is a likelihood of confusion between them; such a global appreciation of the visual, aural or conceptual similarity of the marks must be based on the overall impression given by the marks, with particular regard to their distinctive and dominant components.[8]

The ECJ endorsed the CFI’s finding that “where the meaning of at least one of the two signs at issue is clear and specific so that it can be grasped immediately by the relevant public, the conceptual differences observed between those signs may counteract visual and phonetic similarities between them”.[9] For the Court, the CFI had not erred in law in finding this to be the case here. The ECJ observed that such considerations were a necessary part of the process of ascertaining the overall impression given by the marks when making a global assessment of the likelihood of confusion between them.

The distinctive character of the earlier mark

The Picasso estate contended that the CFI had incorrectly applied the rule set out in SABEL.[10] This rule states that the more distinctive the earlier mark, either per se or because of the reputation it possesses on the market, the greater the likelihood of confusion and thus the greater the protection such a distinctive mark enjoys.[11] They said that the CFI only considered PICASSO in relation to being the name of a famous artist and had not related it to the goods concerned. The ECJ did not agree; it found that the CFI judgment demonstrated that the CFI made a factual assessment - which the ECJ could not review - that the PICASSO sign was “devoid of any highly distinctive character per se with respect to motor vehicles”.[12]

The average consumer’s level of attention

Relying on its judgment in Lloyd Schuhfabrik Meyer,[13] the ECJ held that as part of the global assessment of the “likelihood of confusion” it must be borne in mind, among other things, that the average consumer’s attention is likely to vary according to the type of goods or services in question. The ECJ thus found that the CFI had indeed been correct in its conclusion that because of the price and technological character of the goods in question, i.e. vehicles, the average consumer would pay a “particularly high level of attention at the time of purchase of such goods”.[14] The ECJ also agreed that the fact that there may be circumstances, unconnected with any purchase, when the relevant public may only give a low level of attention, did not prevent consideration of the high level of attention paid when purchasing such goods.

The ECJ also held that the Arsenal Football case[15] had no effect on the above analysis or its application to the present case.


This case marks the first time the ECJ has considered the legality of the principle that conceptual differences between trade marks can counteract their visual and phonetic similarities, where one of them has a clear and specific meaning capable of being grasped immediately by the relevant public. The Court concurred with the CFI that this principle is indeed an important part of the process of making a global assessment of “likelihood of confusion” between marks, as required by Article 8 (1)(b) of the Community Trade Mark Regulation No 40/94.

However, it could be argued that the application of this rule to very famous names, i.e. ones with rich conceptual references, may cause the owners of such names and associated trade marks to have greater difficulty proving likelihood of confusion in opposition proceedings. This would be the case if such very famous names were employed in relation to goods or services unconnected with their original reputation.

Furthermore, the author believes that the ECJ was correct in holding that the attention of the average consumer should be measured at the point of purchase in transactions of this type i.e. those concerning vehicles. To hold otherwise would run counter to common sense and the realties of the market place.

Published in World Intellectual Property Report, February 2006

[1] Case C-361/04 P.

[2] An estate in co-ownership under Article 815 of the French Civil Code.

[3] Daimler-Chrysler AG was an intervener in these proceedings.

[4] According to Advocate General Ruiz-Jarabo Colomer, Hergé, the creator of ‘Tintin’, by failing to explain the term ‘Picaro’ in his comic book adventures, may be somewhat to blame for this. See: Tintin et les Picaros, Casterman, Tourai, 1976.

[5] The CFI relied on the following case: Case T-292/01 Phillips-Van Heusen v. OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 54.

[6]Case C-251/95 SABEL v Puma [1997] ECR I-6191, Case C-39/97 Canon [1998] ECR I-5507, and Case C-3412/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819.

[7] See for example: Arsenal Football Club [2002] ECR I-10273, where the consumer’s level of attention both before purchase, at the moment of purchase, and after purchase had to be considered.

[8]Case C-251/95 SABEL v Puma [1997] ECR I-6191, paragraphs 22 and 23.

[9] Case C-361/04 P, ECJ judgment, paragraph 20.

[10]Op. cit.

[11] SABEL judgment, op. cit.,at paragraph 24.

[12] Case C-361/04 P, ECJ judgment, paragraph 32.

[13]Op. cit.

[14]Ibid at paragraph 39.

[15]Op. cit.