Is Pinocchio a valid trademark?

In its decision of February 25, 2015, the Second Board of Appeal of OHIM, in partially upholding an appeal, effectively confirmed that the word "Pinocchio" is registrable as a trademark.

In 2009, Disney obtained a trademark registration from the Trademark Office for the term "Pinocchio" in connection with goods and services in several classes. 

In 2012, Yves Fostier, the owner of a Community trademark application that included the word "Pinocchio" as part of a figurative mark, filed an application with OHIM to invalidate Disney’s trademark.

According to Mr. Fostier, Disney’s trademark established an unacceptable monopoly over elements of law that had become part of popular folklore and tradition. In any case, Disney’s application lacked distinctive character, as it was widely known and had entered the public domain. 

At first instance, however, the Office had rejected Mr. Fostier’s arguments, noting that, on the one hand, the mere fact that a sign constitutes the title of a story does not preclude the ability of that 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 had he 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 public that it perceives the mark as primarily designating the title of a story or a book, that mark may lack distinctiveness. This is more likely to be the case 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 names of fictional characters can be registered and function as indicators of origin, it must be determined whether a sign is capable of being distinctive for the specific goods and services covered by the mark.

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