Don’t you know who I am? Picasso whiskey and the likelihood of confusion

The UK Intellectual Property Office ("UKIPO") have issued a decision in an opposition between Florian Ruiz-Picasso (a member of the Picasso family) and Picasso Group Co. Ltd ("Picasso Group"). 

Picasso Group filed a trade mark application for the word PICASSO covering whiskey in Class 33. The application was opposed by Florian Ruiz-Picasso, the great-grandson of artist Pablo Picasso, relying on his earlier registered trade mark FLORIAN PICASSO covering "beers; soft drinks; mineral and aerated waters; energy drinks" in class 32.

The opposition was brought under section 5(2)(b) of the Trade Marks Act 1994 ("TMA") on the basis of an alleged likelihood of confusion, it being argued that the application consisted solely of the surname “Picasso” and that the goods covered by both marks were identical or similar. An additional claim of bad faith under section 3(6) TMA was initially pleaded but subsequently withdrawn.

The decision

In comparing the goods, the hearing officer found whiskey to be dissimilar to soft drinks and energy drinks and similar to beer but only to a low degree, noting differences in strength, production, consumption occasions and consumer expectations despite some overlap in retail channels.

When comparing the marks PICASSO and FLORIAN PICASSO, the UKIPO recognised a medium degree of visual and aural similarity arising from the shared surname but concluded that the overall conceptual impression differed. Despite the fame of Pablo, 'Picasso' is not a common surname in the UK, and neither is Florian a common forename. As a result, the mark FLORIAN PICASSO was viewed as comprising two uncommon names, each making a roughly equal contribution to the overall impression. The surname may carry slightly more weight, but not to an extent that would dominate or render the forename negligible. Accordingly, the forename 'Florian' was treated as an integral part of a personal name rather than signalling an extension of the Picasso family. The earlier mark PICASSO was found to possess slightly above-average inherent distinctiveness, with no evidence of enhanced reputation for the purposes of the goods at issue.

Taking all factors together, the UKIPO held that there was no likelihood of direct or indirect confusion, and the opposition failed.

Commentary

The Picasso decision highlights how even famous names can face significant limits in opposition proceedings where the goods at issue are only weakly related and the risk of consumer confusion is inherently low. Despite the cultural prominence of the Picasso name, the opponent's attempt to rely on its notoriety was undermined by two factors: first, the conceptual distinctiveness created by the addition of the uncommon forename 'Florian', and second the absence of any evidence demonstrating that the earlier mark enjoyed an enhanced reputation for the goods covered. In the absence of such evidence, the UKIPO assessed the mark on its inherent characteristics alone; characteristics that were insufficient to bridge the conceptual gap between a full personal name for 'Florian Picasso' and the singular 'PICASSO' as the dominant and distinctive element of the earlier mark. Crucially, the goods themselves occupied different commercial spheres, with only limited overlap between the opponent's alcoholic beverages for beer and the applicant's whiskey.

In this way, the decision demonstrates that fame does not automatically translate into broad trade mark protection; a well-known name cannot always compensate for a lack of similarity between the marks or the goods and services, particularly when no evidence has been provided to support such a claim. Protection ultimately turns on whether consumers perceive the name as a badge of commercial origin for the goods or services in question.