Trade mark decision

BL Number

O/082/01

Decision date

19 February 2001

Hearing officer

Mr M Reynolds

Mark

PQASSO

Classes

16, 41

Applicant

A Farley

Opponent

The Joint Ownership on the monopoly of the Intellectual Property attached to the work of Pablo Picasso

Opposition

Sections 3(1)(b), (c) & (d), & Section 3(6)

Result

Section 3(1)(b) - Opposition failed

Section 3(1)(c) - Opposition failed

Section 3(1)(d) - Opposition failed

Section 3(6) - Opposition failed

Points Of Interest

• Bad faith - The Hearing Officer avoided the temptation to explore more fully the potential extent of an objection on this ground, though prima facie it seemed to him that the closer the goods or services to a famous person’s area of fame or expertise, the more readily sustainable the objection, and conversely. The notes on the Trade marks Act seemed to cover the position of administrators of a deceased person’s estate, as well as living, well-known persons.

Summary

Opposition based on opponent’s contention that the mark in suit is the phonetic equivalent of PICASSO and visually closely resembles that name. In his approach under Section 3(6), which he inferred was the opponent’s strongest ground, the Hearing Officer adopted the usual objective test and came to the clear view that there was no basis for a finding of bad faith in this case. This reflected his view that the mark (an acronym for Practical Quality Assurance Systems for Small Organisations) was an unusual combination of letters and, as written, was highly unlikely to be taken as the name (or signature) of the artist. Moreover, even if some people chose to pronounce it by analogy with the name PICASSO, they would not thereby be mistaking it for the artist’s name, with the adverse consequence contended for by the opponents.

Under Section 3(1)(b), the Hearing Officer saw no objection to the mark in suit in respect of quality assurance training systems in Class 41, which had no obvious association with Picasso, nor did he find such a descriptive usage in respect of the Class 16 goods (printed matter, instructional and teaching material), even assuming that a phonetic rendition of the mark produced ‘Picasso’. Opposition under Section 3(1)(b) therefore failed, and similarly the opposition under Sections 3(1)(c) and (d). Elvis Presley and Jane Austen cases distinguished.

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