From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Wednesday, 21 January 2015

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.

A great mark for footwear,
but would it be registrable
for vacuum cleaners?
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


Philip Eagle said...

Also, "pianissimo" is a recognised musical direction for "very, very quiet", so it could be claimed to be descriptive for non-Italian-speakers who were even vaguely into classical music.

Anonymous said...

La Poste runs a service called "Colissimo, combining the superlative "-ssimo" to "colis", which is the French word for "parcel".

Grundig could take the cue.

How about Suckyssimo? Pianovac?

Anonymous said...

Grundig didn't get very far with "GentleCare" either.

Alberto Bellan said...

This decision makes no sense at all. 'Pianissimo' for hoovers could perfectly work as distinctive sign in Italy. Even "piano" could become a trade mark for domestic machines, as its significance is used in connection to sounds or voices, not noises, and no Italian consumer would think to hoovers or bimby or whatever when it comes to the word "piano".

As to "pianissimo", it is mainly used in music or, as Jeremy reports, to mean "very slowly". Thus, while it is certainly evocative of something that goes silently (ie, with low voice or low music/sounds), I think the GC has completely got It(alian) wrong.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':