Softly, softly: General Court no-hopes Pianissimo application
The General Court of the European Union gave one of the most predictable decisions of the year to date this morning when it dismissed Grundig's appeal against refusal to register a Community trade mark (CTM) in Case T‑11/14, Grundig Multimedia AG v Office for Harmonisation in the Internal Market -- an appeal which had "reject me" written all over it.
Grundig applied in August 2012 to register the word mark PIANISSIMO as a Community trade mark for a whole bundle of engine and machines, including washing machines and vacuum cleaners, in Class 7 of the Nice Classification. No way, said the examiner: we have a CTM Regulation Article 7(1)(b) problem here: PIANISSIMO is devoid of any distinctive character. In November 2013 the Fourth Board of Appeal agreed with him. In essence, said the Board, under Article 7(2) a mark only has to be devoid of distinctive character in part of the Community if it is to fall foul of the Article 7(1)(b) absolute ground of refusal and here, since the word "pianissimo" is an Italian word, the relevant Italian consumer would know that one of the meanings of the word ‘piano’ is ‘noiseless’ or ‘without making a noise’. Such consumers, seeing PIANISSIMO on their noisy vacuum cleaners, would not even imagine that the word was an indication of their origin; rather, it would be seen as a promotional and laudatory message that their vacuum cleaners weren't so noisy after all.
Grundig appealed, but it was all in vain. Said the General Court:
* Given the noise-conveying characteristics of the products designated in Grundig's application, the word ‘pianissimo’ would be perceived by the relevant public as a promotional formula indicating that those products functioned silently. That message was expressed so clearly and obviously that the relevant public would not need to make a special effort to interpret it.
* The fact that the word ‘pianissimo’ also meant ‘very slowly’ -- a meaning which the Board of Appeal did not take into consideration -- was of no assistance to Grundig here.
Says Merpel, if Grundig wanted EU-wide protection for PIANISSIMO, despite its obvious problem in Italy, why didn't it apply to register PIANISSIMO as a national mark in all the countries in which Italian isn't spoken, build up a web of national registrations while it used the mark in Italy and elsewhere, then file for a CTM on the basis that it had acquired distinctiveness through use within the EU? It might be a roundabout route but that's sometimes the best way of reaching your destination. Merpel is however impressed at the fact that this application has got all the way to a General Court ruling in only 18 months; it's good to see things speeding up in Alicante and Luxembourg, where "pianissimo" is not being interpreted as a synonym for mañana.
The IPKat who, like most domestic felines, has an aversion to loud domestic appliances, would be happy to trade his vacuum cleaner and washing machine in for a PIANISSIMO. Alas for him, his appliances would be more appropriately branded NESSUN DORMA.
Cats and vacuum cleaners here and here
Softly Softly here
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| A great mark for footwear, but would it be registrable for vacuum cleaners? |
Grundig appealed, but it was all in vain. Said the General Court:
* Given the noise-conveying characteristics of the products designated in Grundig's application, the word ‘pianissimo’ would be perceived by the relevant public as a promotional formula indicating that those products functioned silently. That message was expressed so clearly and obviously that the relevant public would not need to make a special effort to interpret it.
* The fact that the word ‘pianissimo’ also meant ‘very slowly’ -- a meaning which the Board of Appeal did not take into consideration -- was of no assistance to Grundig here.
Says Merpel, if Grundig wanted EU-wide protection for PIANISSIMO, despite its obvious problem in Italy, why didn't it apply to register PIANISSIMO as a national mark in all the countries in which Italian isn't spoken, build up a web of national registrations while it used the mark in Italy and elsewhere, then file for a CTM on the basis that it had acquired distinctiveness through use within the EU? It might be a roundabout route but that's sometimes the best way of reaching your destination. Merpel is however impressed at the fact that this application has got all the way to a General Court ruling in only 18 months; it's good to see things speeding up in Alicante and Luxembourg, where "pianissimo" is not being interpreted as a synonym for mañana.
The IPKat who, like most domestic felines, has an aversion to loud domestic appliances, would be happy to trade his vacuum cleaner and washing machine in for a PIANISSIMO. Alas for him, his appliances would be more appropriately branded NESSUN DORMA.
Cats and vacuum cleaners here and here
Softly Softly here
