Is Pinocchio a valid Trademark?

With its decision of 25 February 2015 the Second Board of Appeal of OHIM partially upholding an appeal, has in fact confirmed the registrability as a trade mark of the word "Pinocchio".

In 2009, Disney had obtained by the Office of the registration of the word term "Pinocchio" for goods and services included in several classes. 

In 2012, Yves Fostier owner of a Community trade mark application which contains, the word "Pinocchio", but in a figurative trademark, had filed an application at OHIM to invalidate Disney’s trademark.

According to Mr. Fostier, Disney’s Trademark established an unacceptable monopoly on matters of law which entered in popular folklore and tradition. In any case, Disney’s application lacked of distinctive character, because popular and because it fell into the public domain. 

In the first degree the Office had, however, rejected Mr. Fostier’s arguments, observing that, on the one hand, the mere fact that a sign constitute the title of a story does not exclude the ability of the same sign to function as a trademark, and, second, the plaintiff had failed to demonstrate that the term "Pinocchio" was not capable of distinguishing the goods and services for which the mark was registered, nor he had proved that the term had become customary in a European language.

Mr. Fostier appealed the decision. 

This time, the Second Board of Appeal noted that, if a title is so well known to the audience to the point that it perceives the mark corresponding to designate primarily a title of a story or a book, that brand may be lacking distinctiveness. This will be more likely if it can be shown that several versions of the story have been published or that there have been numerous television and film adaptations, that have reached a wide audience. Therefore, although in principle the titles or the names of fictional characters can be registered and function as indicators of origin, it must be asked whether a sign is capable of being distinctive for the specific products and services covered by the mark.

According to the Second Board of Appeal Pinocchio belong to this special category of signs lacking distinctive character in relation to certain goods and services in Classes 9 (in particular film, video games, films, audio and video), 16 (children's books , books of drawings, cartoons), 28 (toys and the like), 41 (amusement parks and the like, theater productions, live performances) as consumers could be be led to believe that these goods and services are connected with the history and the character of Pinocchio.