Italian word 'pianissimo' will not be perceived as indication of origin for Class 7 goods

European Union

In Grundig Multimedia AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-11/14, January 21 2015), the General Court has considered a dispute arising from the application filed by Grundig Multimedia BV for the registration of the word mark PIANISSIMO in respect of products in Class 7 of the Nice Classification (including engines, machines, and electrical and household devices).

The OHIM examiner refused the application based on Article 7(1)(b) and Article 7(2) of the Community Trademark Regulation (207/2009).

The Fourth Board of Appeal of OHIM confirmed the refusal, holding that the trademark consisted of the word ‘pianissimo’, which is the superlative of the Italian adjective ‘piano’, one of the meanings of which is ‘noiseless’ or ‘without making a noise’. This meaning, when attached to the goods designated in the application, would be perceived by Italian consumers as a promotional and laudatory message informing them of the fact that those goods produce little or no noise, or that they run extremely silently.

The Board of Appeal added that this word, in one of its possible meanings, designates a characteristic of the goods or services concerned. The board further stated that Grundig’s argument based on the registration by OHIM of other trademarks consisting of the word ‘pianissimo’ was not capable of changing its assessment, since the respect for the principle of equal treatment must be reconciled with the principle of legality, according to which a person may not rely, in support of his claim, on an unlawful act committed in favour of a third party.

Grundig brought an action before the General Court against OHIM’s decision. In support of its action, Grundig alleged, among other things, infringement of Article 7(1)(b) of the regulation and infringement of the principle of equal treatment.

Grundig argued that the word ‘pianissimo’ is known by the average consumer insofar as it refers to the sound level of a piece of music and that the consumer will associate it with music, particularly with classical music. It added that that word also means ‘very slow’, a meaning which cannot be classified as laudatory in respect of machines or apparatus. Consequently, in Grundig’s view, the word ‘pianissimo’ should be recognised as having distinctive character when applied to machines and apparatus since, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned.

Grundig also complained that the Board of Appeal had infringed the principle of equal treatment by refusing to register its trademark, as OHIM had agreed to register other signs consisting of the word ‘pianissimo’.

The General Court endorsed the reasoning of the Board of Appeal and dismissed Grundig’s action.

First, the General  Court considered that the Board of Appeal had correctly noted that the trademark applied for consisted of a word, common in Italian, one of the meanings of which was ‘extremely silent’ or referred, at the very least, to a very low sound volume. The board had correctly concluded that, in the light of the characteristics of the products designated by the mark applied for, the use of which is associated with noise, the mark would be perceived by the relevant public as a promotional formula indicating that those products function silently. According to the general Court, the message was thereby expressed so clearly and obviously that the Italian public would not need to make a special effort to interpret it. As a result, the Board of Appeal had been correct to hold, in the light of that meaning of the word ‘pianissimo’, that the sign at issue would not be immediately perceived by the relevant public as an indication of the commercial origin of the goods, but as the description of one of their characteristics.

The court also reiterated that a word sign must be refused registration under Article 7(1)(b), where, according to at least one of its possible meanings, it designates a characteristic of the products or services concerned. It concluded that the word ‘pianissimo’, referring to a very low sound volume, designated one of the characteristics of the goods covered by the trademark applied for. As a result, the fact that the word ‘pianissimo’ also means ‘very slowly’ - a meaning which the Board of Appeal did not take into consideration - was of no benefit to Grundig.

The court also considered that it was not apparent from the documents in the file that the other meanings of the word ‘pianissimo’ on which Grundig relied were more important than the meaning on which the Board of Appeal’s arguments were based. Accordingly, the meaning of the word ‘pianissimo’ referring to the idea of slowness would be secondary in relation to that referring to sound volume. In addition, the fact (relied upon by Grundig) that the word ‘pianissimo’ referred to the world of music increased still further the greater importance of the meaning referring to sound volume; that did not call into question the perception of that word as a mere promotional formula, and in the light of the positive features commonly associated with music, it strengthened that perception.

Regarding Grundig’s complaint that the Board of Appeal had infringed the principle of equal treatment, the court said that while, in the light of the principles of equal treatment and good administration, OHIM must, when examining an application, take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not, those principles must be reconciled with respect for legality. Consequently, a person who files an application for registration of a sign as a trademark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else.

Since the examination of the trademark at issue in the light of that provision could not, in itself, lead to a different conclusion, Grundig’s claim could not succeed. In order to cast doubt on the conclusion that the registration of the trademark applied for was incompatible with Regulation 207/2009, Grundig could thus not properly rely on a previous decision of OHIM.

This judgment confirms long-standing, well-established and consistent jurisprudence regarding the interpretation of the rather vague formula "devoid of any distinctive character" in Article 7(1)(b) and the kind of signs that fall within its scope. Businesses and trademark lawyers will thus not be surprised by this decision. From a legal point of view, two minor remarks could be raised regarding the judgment: the fact that it does not bring to the table - not even remotely - the notion of descriptiveness contained in Article 7(1)(c), and the fact that it does not use concrete language when addressing Grundig’s argument regarding the principle of equal treatment. In addition, the BELISSIMO marks cited by Grundig in its pleadings should have been mentioned in the judgment. Had the court been more explicit when dealing with this argument, businesses and legal operators would have been able to better understand the indirect implications of the judgment.

Joao Miranda de Sousa, Garrigues, Madrid

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