If you want to know what they’re talking about in trade mark law in the US, you might want to head over to 43(b)log: in particular the posts summarising proceedings from the AALS Section on IP – Parts one, two, three, and four.

In other trade mark news, IPKat reports an ECJ decision (scroll down to C-361/04 P (2006-01-12) Ruiz-Picasso and Others v OHIM) on whether the mark PICARO for vehicles would be likely to be confused with an earlier mark, PICASSO (registered, inter alia, for vehicles).

The ECJ has apparently held that the CFI had not erred in finding that, where one of the compared signs has a clear meaning (ie, PICASSO’s known reference to a very famous artist), any conceptual differences can displace any visual and aural similarities. So, even if PICARO and PICASSO are close, the fame and known meaning of PICASSO prevents confusion. In any event, OHIM had found the degree of phonetic similarity between the two marks to be relatively low.

The IPKat comments that:

this decision has serious ramifications for those who own trade marks corresponding to the names of well-known people. It is clear that the person’s name will benefit from a more limited scope of protection than other marks because its well-known status will often displace any likelihood of confusion caused by visual and phonetic similarity between the name and later marks


My gut reaction, though, is that the reasoning of the ECJ as described makes sense – if the issue is consumer confusion, then protection extends as broadly, or as narrowly, as preventing confusion requires.

It’s worth noting that this issue of confusion in the face of fame is one that has occasionally dogged Australian courts, with varying reasoning adopted in the Woolworths Metro case, the Coca-Cola v All Fect case and the Hill of Grace/Hill of Gold decision (see the latter for discussion of the differences in reasoning in the earlier two cases).

4:28 pm - posted by . Categories: EU , Judgments , Law , Trade Mark , USA
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