There will be a hushed silence this morning in the offices of Grundig Multimedia AG after news that the General Court of the European Union has rejected their appeal against refusal to grant the registration of the Community Trade Mark application of the mark ‘PIANISSIMO’ in respect of electronic devices such as hoovers and washing machines.
OHIM had previously rejected the application, under CTM Regulation Article 7(1)(b) on the grounds that PIANISSIMO is devoid of any distinctive character, since the word “pianissimo” is an Italian word meaning ‘quiet’ or ‘without making a noise’. Accordingly to OHIM, the relevant Italian consumer would know that the meanings of the word and would not understand it as an indication of the origin of the goods (ie the brand) rather, it would be seen as a promotional and laudatory message that this vacuum cleaner was less noisy.
Grundig argued that no, the mark was used as a brand but the appeal fell on deaf ears.
I wonder whether a more considered registration strategy of filing national applications within the EU (rather than an overriding CTM which was always likely to attract rejection at least in Italy) would have been a better option. Applications may have been more successful in France and Germany and could have been planned to ensure that priority dates were kept, prior to an application in Italy. This case goes to show that a well considered strategy is the way forward. But we knew that already.