With its decision on 25 February 2015 in Case R 1856/2013-2 Yves Fostier v. Disney Enterprises, Inc., partially allowing an appeal, the Second Board of Appeal of OHIM (Office for Harmonization in the Internal Market) confirmed the validity of the word “PINOCCHIO” as a Community trademark (CTM).

In 2009, Disney obtained the registration of the word “PINOCCHIO” for goods and services included in several Classes: the 3, 9, 14, 16, 18, 20, 21, 24, 25, 28, 30 and 41.

In 2012, Yves Fostier filed a request for declaration of invalidity. According to the applicant, allowing the registration of the trademark in question (the title of a very popular children’s story published in 1883 by Italian author Carlo Collodi) would be tantamount to establishing an unacceptable monopoly over a component of folklore. In any event, the trademark was devoid of distinctive character, because it had become popularised and had fallen into the public domain; the insertion of the word in dictionaries, furthermore, had created a sort of presumption of “generality”.

The Office, however, rejected the request, noting that, on the one hand, the sole fact that a sign constitutes the title of a story does not exclude the capability of the same sign to also operate as an indicator of commercial origin; and, on the other, that the applicant had failed to prove that the term “PINOCCHIO” was incapable of distinguishing the goods and services for which the trademark was registered, nor had it proven that the term had become customary in a European language or that it had been included in a dictionary.

Yves Fostier challenged the decision, essentially reiterating the arguments put forward in the first instance proceedings. This time around, they gained some ground, albeit only partially.

The Second Board of Appeal has noted that, in proceedings concerning absolute grounds for invalidity, the Office may of its own motion take into consideration facts that are generally known; applying this rule to the case at hand, the Board considered that, although it was strictly the applicant’s burden to prove the absence of distinctive character, the matter called for a “common sense” approach.

In this respect, the Board considered that “… if a title is famous enough to be truly well known to the relevant public where the trademark can be perceived in the context of the goods/services as primarily signifying a famous story or book title, a trademark may be perceived as non-distinctive. A finding of non-distinctiveness in this regard will be more likely where it can be shown that a large number of published versions of the story have appeared and/or where there have been numerous television, theatre and film adaptions reaching a wide audience”. Therefore, although in principle titles or names of fictional characters may be trademarks and function as indicators of trade origin, the question must be asked whether a sign is capable of being distinctive for the specific products and services covered by the CTM.

‘PINOCCHIO’, in the Board’s view, belongs to this special category of titles. It is, in fact, the title of a long established story, well known as a reference to the children’s story of a wooden boy whose nose grows when he lies. ‘PINOCCHIO’, according to the Board, has been established for so long that it has ‘entered into the language’, and is incapable of being attributed with any meaning other than just a particular story.

That said, according to the Board, the trademark consisting of the word “PINOCCHIO” is actually devoid of distinctive character in relation to certain goods and services in Classes 9 (especially films, video games, exposed films, audio and video discs), 16 (children’s books, picture books, comics), 28 (toys and the like) and 41 (amusement parks and the like, theatrical productions, live performances) since consumers will think that these goods and services refer to the story and character of Pinocchio, this being the only meaning of the word.

Conversely, the Board saw no reason to assume that, for the remaining goods and services covered, the same trademark would not be memorised and recognised as an indication of trade origin; nor did it see any reason why the denomination should be left free for competitors, since it does not deprive other operators of an essential and widely used term in the commercial fields. For its part, the applicant has not presented evidence of lack of distinctiveness for the same goods and services.

In conclusion, the Office partially annulled the contested decision, leaving Disney’s trademark to survive for all products and services not listed above.