The EU General Court has recently confirmed a decision of the OHIM Board of Appeal rejecting an application by Swiss entity, Grundig Multimedia AG, to register “PIANISSIMO” as a Community trade mark (CTM). The application in question covered a wide range of engines, machines and electrical devices, including laundry machines, dishwashers and vacuum cleaners.
For our Italian-speaking readers (and most musicians), it will come as little or no surprise that the application was rejected on the ground that it was devoid of distinctive character under Article 7(1)(b) of the CTM Regulation.
Having regard to the goods applied for, and the perception of the relevant (Italian-speaking) public, the General Court concurred with the Board of Appeal’s conclusion that the word "pianissimo", meaning "extremely silent", “noiseless” or “without making a noise”, in the context of “engines, machines and electrical devices” (all of which have a tendency to produce high levels of noise when used) would be construed by Italian-speaking consumers as merely descriptive of one of the characteristics of the products, thus serving as a “promotional formula” rather than an indication of commercial origin.
This case is another reminder for CTM applicants (and their marketing departments) that it is important to consider how their trade marks will be perceived by consumers in all 28 European Union member states, and not just in their domestic market(s). As a Swiss entity (with local Italian speakers), it is likely that the General Court’s decision will not have come as much of a surprise to Grundig.