Claude Ruiz Picasso v Robyn Thomas

[2001] ATMO 84

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Claude Ruiz Picasso to registration of trade mark application 754587(42) - PIZZA PICASSO PIZZAS OF ART and device - filed in the name of Robyn Thomas.

Background

Trade mark application number 754587 is an application to register the words pizza picasso pizzas of art and palette device, which appears below, in class 42 for providing food - restaurant, takeaway & delivery. The application was filed on 10 February 1998 ("the relevant date") by Robyn Thomas of Shop 5, 503-511 King Street, Newtown, New South Wales ("the applicant"). 754587 was duly examined and, on 11 June 1998, the Registrar advertised, in the Australian Official Journal of Trade Marks, that he accepted this trade mark for registration.

On 11 September 1998, in accordance with Part 5 of the Trade Marks Act 1995 ("the Act" ), Claude Ruiz Picasso of 13 Rue dos Chanaleilles, 75007 Paris, France ("the opponent") filed opposition to the registration of 754587 and, in its notice of opposition, nominated 13 grounds, relying on ss.39, 41, 42(b), 43, 44, 55, 58, 59, 60 and 62 of the Act.

The opponent served on the applicant, and filed with the Trade Marks Office, a statutory declaration by Claude Ruiz Picasso. This constitutes the evidence in support of the opposition.

The applicant served on the opponent, and filed with the Trade Marks Office, a statutory declaration by Robyn Thomas. This constitutes the evidence in answer.

Pursuant to the provisions of regulation 5.14, the opponent applied to be heard, and the Registrar appointed a hearing for 14 August 2001, in Canberra. This hearing was before me. The opponent was represented by Mr Adrian Ryan of counsel, instructed by Davies Collison Cave, Patent and Trade Mark Attorneys of Melbourne. The applicant appeared in person, accompanied by Mr Alan Cameron, a partner in the applicant's business.

The Evidence

The opponent's evidence in support comprised a statutory declaration by Claude Ruiz Picasso dated 20 November 2000. The declaration included Exhibits CRP1 to CRP 19. The evidence may be summarised as follows:

Claude Ruiz Picasso is the son of the late Pablo Picasso ("Picasso"), and the administrator of the joint ownership of the monopoly of the artistic copyright associated with the work of Picasso.

Picasso was a Spanish artist, who was one of the most influential and prolific artists of the 20^th Century. An enormous body of Picasso's work remains exhibited throughout the world.

The life and works of Picasso are the subject of many publications, including internet websites. The opponent controls an authorised website publicising the exhibitions of Picasso's work.

Pablo Picasso, Picasso and the "Picasso" signature are trade marks of the opponent, and used for textiles, chinaware, ceramics and glassware. A licence agreement exists in the USA regarding the marketing of such goods and other artistic works of Picasso.

Many licence agreements exist whereby the opponent grants licence to various parties to use reproductions of Picasso's artistic works and signature in relation to a wide range of goods and services

The opponent has successfully restrained parties in the United States of America and Canada from using and exploiting the Picasso name, signature, trade marks and artistic works. I note that in both of the instances exhibited by the opponent the defendants purported to be licensees or agents of the opponent.

The opponent is the owner of copyright in the signature of Picasso. Such copyright is protected in Australia.

The opponent's evidence in answer comprised a statutory declaration by Robyn Thomas dated 23 March 2001. The evidence may be summarised as follows:

The applicant operates two shops that produce gourmet pizza and related food lines for sale through dine-in, takeaway and delivery service. The applicant has operated since 13 March 1996.

The applicant denies each of the grounds in the notice of opposition.

Picasso's signature is not part of the trade mark, the name "Picasso" is written in "staccato" font.

The applicant does not use any of Picasso's artistic works in advertising or in either of the shops.

The dominant word in the trade mark is "PIZZA", the remaining words give rise to a connotation of creative pizzas. This is not deceptive or confusing.

The applicant's customer base does not constitute "a substantial portion of the Australian public", rather it comprises people within a 3 kilometre delivery distance of the applicant's Newtown and Randwick shops.

At the hearing, Mr Ryan, for the opponent, limited his submissions to the principal grounds of the opposition, namely those arising under ss42(b) and 43 of the Act.

Submissions, Considerations and Findings

The s42(b) Ground

Section 42 of the Act reads:

42 An application for the registration of a trade mark must be rejected if:

(a) the trade mark contains or consists of scandalous matter; or

(b) its use would be contrary to law.

The decision of Madgwick J in Advantage-Rent-a-Car Inc v Advantage car Rental Pty Ltd [2001] FCA 683 ("the Advantage case") is authority for the Registrar of Trade Marks, and delegates of the Registrar, making a decision in respect of a ground in opposition proceedings that the use of the mark the subject of the application "would be contrary to law" within the meaning of paragraph 42(b) in that such use would constitute an infringement of a provision in legislation.

The opponent submits that the trade mark is contrary to law in that it infringes the copyright subsisting in Pablo Picasso's signature. The copyright subsists in the signature because the signature is an artistic work.

By virtue of s31 Copyright Act, the reproduction in a material form of an artistic work by other than the copyright constitutes an infringement of copyright. The opponent submitted that the use of the opposed trade mark would necessarily involve reproduction of the signature of Picasso. This was because the word "Picasso" in the mark is identical or almost identical to the signature of Picasso and had plainly been copied from that signature.

Mr Cameron presented the applicant's submissions in response. He particularly addressed the factual details of the opposition.

The applicant said that the word "Picasso" in the trade mark was not a copy of Picasso's signature. It was simply the word "Picasso" written in a typeface font available in the "Word" word-processing package. Further there was no intention to deceive or mislead.

Madgwick J's judgment in the Advantage case is authority for the proposition that where in opposition proceedings an opponent produces evidence that the trade mark applicant is not the owner of the copyright in original work(s) comprised in the mark and that the applicant is not licensed by the owner to register the mark or to exercise the copyright rights which would necessarily be involved when the mark, when registered, was used, then the Registrar or delegate may form the opinion that use of the mark would be contrary to law in that such use would constitute an infringement of copyright under the Copyright Act 1968. Once that opinion has been formed, then the registration of the trade mark must be rejected.

I am satisfied on this evidence that Picasso's signature is an original artistic work that is protected by the Copyright Act 1968. The evidence adduced by the opponent also satisfies me that the applicant is not the owner of the copyright in Picasso's signature, nor licensed by the owner to exercise copyright rights in Picasso's signature. I am satisfied by the evidence that the opponent is the owner of the copyright in Picasso's signature.

I am not, however, satisfied that there has been a reproduction of the signature. To assist me with ascertaining what "reproduction" entails, for the purposes of the Copyright Act, I turn to the judgment of Gibbs CJ in S.W. Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 5 IPR 13, at 15 and 16:

The notion of reproduction, for the purposes of copyright law, involves two elements - resemblance to, and actual use of, the copyright work, or, to adopt the words which appear in the judgment of Willmer L.J. in Francis Day & Hunter Ltd. v. Bron (1963) Ch 587, at p 614, "a sufficient degree of objective similarity between the two works" and "some causal connection between the plaintiffs' and the defendants' work". Lord Reid said in Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. (1964) 1 WLR 273, at p 276; (1964) 1 All ER 465, at p 469: "Broadly, reproduction means copying, and does not include cases where an author or compiler produces a substantially similar result by independent work without copying. And, if he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken." (see also at pp.283, 288 and 293; pp.473, 477 and 481 of All E.R.)

Counsel for the opponent also drew my attention to the judgment of Pincus J, in Roland Corporation and Anor v Lorenzo and Sons Pty Ltd (1991) 22 IPR 245, at 249, where he said:

It seems clear that a mere random collection of letters of the alphabet could not be copyright and presumably a mere random scribble could not be either, but the devices with which I am concerned are by no means random and were plainly drawn with care, to obtain an effect. It is true that they are relatively simple and their simplicity will produce the result that only an exact or fairly exact copy will infringe; but that is not a problem for the applicants here.

An extract of the "Picasso" element of the applicant's mark is shown below (left) along with an example of Pablo Picasso's signature (right) as it appears in Mr Claude Picasso's declaration:

I am not satisfied that the rendition of the word Picasso in the applicant's mark is a copy of any signature.

A further s42(b) ground was argued, in that it was submitted that the use of the mark would be a contravention of s42 of the Fair Trading Act 1987 (NSW), in that the use of the mark falsely represents, in the course of trade and commerce, a connection between Pablo Picasso and the applicant's goods and services and that it would constitute passing off. Nothing in either the evidence or the submissions satisfy me, however, that this trade mark is misleading or deceptive or likely to mislead or deceive.

In respect of the common law action of passing off, I think it is clear from a careful reading of Madgewick J's decision in the Advantage case, that the contrary to law provision of s42(b) concerns statute law. If I be wrong on this point, I note that there were no submissions or evidence presented to support this point.

None of the submissions satisfy me that use of this trade mark would be contrary to law, and I accordingly dismiss the s42(b) ground.

The Section 43 Ground

Section 43 reads:

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

The opponent submitted that the artist Pablo Picasso, known simply as "Picasso", has an enormous reputation, both in Australia and worldwide. The name "Picasso", therefore, immediately brings to mind the famous artist. It was submitted that it was obvious the purpose of the mark is to take advantage of this reputation in a commercial sense.

The opponent submitted that the connotation of the mark was of some sort of a connection, however vague, between the applicant's restaurants and Pablo Picasso. The opponent submitted that the evidence demonstrated that there is a worldwide recognition of the connection naturally made by consumers between Picasso and goods bearing the name "Picasso". Further, the licence agreements in evidence demonstrated that businesses were prepared to pay a licence fee to take advantage of the Picasso name in relation to their goods.

The applicant responded by submitting that there was no intention to deceive or confuse. Nor was there an obvious connection between the mark and the artist Pablo Picasso. The public was not so easily confused by trade marks. It was submitted that such links should not be presumed in the absence of evidence demonstrating the public is mislead or confused.

The applicant noted that, with the exception of the licence obtained by Citroen, all the licences were for the use of particular works of art by Picasso. In the case of the Citroen licence, not only was the name Picasso authorised, but also the actual signature of the artist.

Section 43, when used in opposition to registration, requires an opponent to show that:

(a)there is a connotation in the proposed mark, or one of its parts; and

(b)because of this, the trade mark is likely, when in use, to deceive or cause confusion.

TGI Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 confirms that the connotation must be in the applicant's trade mark itself. The connotation cannot be determined as a result of external considerations, such as reputation or use.

Given the influence and proliferation of the works of the late Pablo Picasso, it may be that the opponent can claim notoriety in the term "Picasso". Notoriety in this sense is different to reputation. I am satisfied that the term "Picasso" is notorious as being reference to Pablo Picasso. Indeed, Picasso is defined as such in the Macquarie Dictionary.

I am reasonably satisfied that the overall impression of the mark, with its use of the name in conjunction with an artist's palette and the word "art", is one that evokes an image of the artist Pablo Picasso. Accordingly, I find that the trade mark does carry a connotation of the late Pablo Picasso. However, merely invoking a reference to the late, great, does not, by itself, establish that use of the subject mark is likely to deceive or to cause confusion.

The test for deception or confusion is recently dealt with in the judgement of French J in Registrar of Trade Marks v Woolworths, (1999) AIPC 91-499 at 39,695 (paragraph 43) (the Metro case). In considering the phrase "likely to deceive or cause confusion", his Honour says:

The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect.  The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring”.

The opponent has adduced evidence of the willingness of businesses to pay a licence fee to use reproductions of Picasso's artistic works, including his signature, and the use of his name in connection with such works. The opponent has also demonstrated that it has used the courts of the United States of America and Canada to restrain parties who had purported to have some connection with the estate of Picasso from using Picasso's artistic works or name.

However, that evidence is of no real assistance in the present case. There is no evidence before me to indicate that any person in Australia would assume that the trade mark would connote a connection, sponsorship, approval or endorsement of the applicant's restaurants and pizzas by Picasso or his estate.

I am not aware of any connection that Pablo Picasso might have had with restaurants or pizzas in his lifetime. While the mere mention of his name might immediately evoke images of his art and artistic genius, it does not likewise summon up visions of pizza. In my opinion, there is nothing in the mark itself to give the imprimatur of endorsement. There is no evidence, in either anecdotal or survey form, before me to find otherwise.

In my view a real and tangible danger of deception and confusion does not exist. I therefore find that no ground has been established under s43.

Decision and Costs

The opponent has not established any of its grounds of opposition. I therefore direct that, subject to payment of the required fees and the expiry of any appeal period, the application proceed to registration.

As to costs, I direct that the opponent Claude Ruiz Picasso pay the costs of the applicant Robyn Thomas in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh
Hearing Officer

7 September 2001