Frida Kahlo Corporation opposed the application on the basis of a likelihood of confusion with its earlier EUTM registrations, including word mark FRIDA KAHLO and the marks shown below, and the Opposition Division partially rejected the application.

Both parties appealed the decision, which was subsequently upheld by the Board of Appeal.

Opposition Division decision

The earlier figurative trade mark depicting a woman covers goods in classes 16 and 25. The Opposition Division found that the word elements in this earlier mark are illegible and therefore will not be taken into account for the purposes of the comparison with the contested mark. Frida Kahlo Corporation argued that the woman represented in the respective trade marks will be associated with the Mexican artist Frida Kahlo. However, it did not file any evidence to support this and the claim was rejected.

The Opposition Division found that the earlier figurative mark, which showed a portrait of a woman, and the contested mark, which showed a partial portrait of a woman together with stylised letters, are visually and conceptually similar to an average degree.

Frida Kahlo Corporation did not expressly claim that the earlier figurative mark has a particular distinctive character as a result of widespread use or reputation, and it was found to have a normal degree of distinctive character.

The Opposition Division concluded that there was a likelihood of confusion between the marks in respect of the identical and similar goods covered by the application in classes 9, 16 and 25.

With regard to the remaining earlier marks relied on, namely the figurative marks for “FK” and “Frida Kahlo” and the word mark “FRIDA KAHLO”, the Opposition Division found that these are different to the contested mark, so there was no likelihood of confusion. The opposition was therefore partially successful and the application refused in respect of goods in classes 9, 16 and 25.

Appeals to the Board of Appeal

Both the opponent and the applicant appealed the Opposition Division’s decision. Frida Kahlo Corporation, the opponent, claimed that there is a likelihood of confusion with all of the earlier marks relied on. It argued that all of the trade marks under comparison are conceptually identical as they all evoke the Mexican artist Frida Kahlo. It also included reference to a number of previous contractual relationships between the parties, court disputes and commercial practices.

Mara Cristina Teresa Romeo Pinedo, the applicant, pointed out that it is the universal heir of the intellectual property rights of Frida Kahlo and that it has legitimate rights in the name, signature, image and pseudonym of the artist. It claimed that the Frida Kahlo Corporation therefore has no legal standing. It argued that there are significant differences between the earlier marks relied on and the contested mark, and that there is no likelihood of confusion between the marks.

The Board of Appeal dismissed both appeals. It upheld the Opposition Division’s finding that there is no likelihood of confusion in relation to the latter three earlier marks, which are different to the mark applied for. It also upheld that there is a likelihood of confusion with the first earlier figurative mark relied on.

With regard to the issue of the commercial relationship and disputes between the parties, the Board of Appeal found that the documents show that both parties have legal standing for the proceedings. Other commercial or litigious matters fall outside the scope of the present appeal.

In short

It may seem surprising that Frida Kahlo’s unique image was deemed simply as representing a portrait of a woman, however in the absence of evidence to show that the earlier marks enjoy an enhanced degree of distinctive character, this is not unexpected. A different decision may arguably have been reached if evidence showing the renown of the artist and her image had been filed, and possibly also if the word elements in the earlier figurative mark had been clearer.

Case details at a glance

Jurisdiction: European Union
Decision level: EUIPO Board of Appeal
Parties: Frida Kahlo Corporation v Dña Mara Cristina Teresa Romeo Pinedo
Date: 28 September 2021
Citation: Joined cases R 381/2021-4 and R 490/2021-4