カテゴリー: Famous mark

The Japan Patent Office (JPO) affirmed an examiner’s refusal of the word mark “PICASSO” for Class 16 goods, finding that consumers would perceive the mark merely as indicating the author, subject matter, or content of the goods rather than their commercial origin.
[Appeal case no. 2025-15872, decided on April 21, 2026]

PICASSO

Picasso International Incorporation, a Taiwanese company, sought to register the wordmark “PICASSO” in standard characters for goods including printed matter and artworks with the JPO on January 15, 2025 [TM App no. 2025-3195].

JPO Examination

On August 19, 2025, the JPO examiner refused registration under Article 3(1)(iii) of the Japan Trademark Law, which bars registration of marks that merely describe the quality, characteristics, or other attributes of the designated goods or services.
The examiner first noted that “PICASSO” is universally recognized as referring to Pablo Picasso, the famous Spanish painter. When the mark is used on artworks, consumers would naturally perceive it as identifying the author of the work. In the case of reproductions, consumers would understand it as identifying the author of the original artwork. Therefore, the examiner concluded that, in relation to artworks, the term “PICASSO” functions primarily as an indication of authorship rather than as a trademark identifying a particular commercial source. The examiner reached a similar conclusion for printed matter by noting that:
Consumers encountering the mark on printed matter would merely understand it to mean:
• a publication about Picasso;
• a publication containing Picasso’s works; or
• a publication otherwise related to Picasso.
The mark would therefore be perceived as describing the content of the goods rather than indicating a single commercial source.

Appeal Trial

On October 6, 2025, the applicant filed an appeal against the examiner’s rejection and argued that the mark possessed sufficient inherent distinctiveness of the mark “PICASSO” based on the following grounds.
First, it argued that its representative had obtained authorization from the Picasso family to develop, manufacture, and sell products reproducing Picasso’s artworks throughout the Asia-Pacific region.
Second, the applicant pointed out that it already owned numerous PICASSO trademark registrations in Japan.
Third, the applicant argued that consumers would not necessarily encounter the mark only as a title or content indication. If PICASSO appeared as the name of a publisher or source identifier, consumers could allegedly recognize it as distinguishing the applicant’s goods from those of other publishers.

The JPO Appeal Board Decision

The JPO did not side with the applicant. The decision emphasizes that the assessment under Article 3(1)(iii) is based on how relevant consumers and traders would ordinarily perceive the mark when used in relation to the designated goods.
The key question is not whether a particular applicant has obtained authorization from the individual’s heirs or estate. Nor is the question whether the applicant already owns other trademark registrations.
Instead, the decisive issue is whether the mark “PICASSO” would generally be understood as describing characteristics of the goods.
The Board considered that relevant consumers would perceive PICASSO merely as indicating that the goods relate to Picasso, such as:
• artworks created by Picasso;
• reproductions of Picasso’s works;
• books about Picasso; or
• publications containing Picasso’s works.
The Appeal Board further stressed the public-interest rationale underlying Article 3(1)(iii).
Citing a Japan Supreme Court precedent, the JPO noted that descriptive indications should remain available for use by all market participants. Because publishers, museums, galleries, art dealers, and others may legitimately need to use the name “Picasso” to describe the content, authorship, or subject matter of their products, granting one entity exclusive trademark rights over the term would be inappropriate.
The JPO Appeal Board therefore concluded that PICASSO lacks source-identifying significance for the relevant goods and cannot function as a trademark.

What about earlier registrations?

The applicant also relied on trademark registrations consisting of the names of historical figures, including artists.
The JPO dismissed this argument, reiterating a familiar principle of Japanese trademark practice:
Registrability must be assessed on a case-by-case basis, taking into account the specific mark, the designated goods or services, and the actual circumstances of trade at the time of examination or appeal.
The existence of earlier registrations does not control the registrability of a subsequent application.