JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
20 November 2012 (*)
(Community trade mark – Invalidity proceedings – Community word mark PAGINE GIALLE – Absolute grounds for refusal – Distinctive character – Lack of descriptive character – No signs or indications which have become customary – Article 7(1)(b) to (d) of Regulation (EC) No 207/2009 – Distinctive character acquired through use – Article 7(3) of Regulation No 207/2009)
In Case T‑589/11,
Phonebook of the World, established in Paris (France), represented by A. Bertrand, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Seat Pagine Gialle SpA, established in Milan (Italy), represented by F. Jacobacci, lawyer,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 4 August 2011 (Case R 1541/2010‑2), relating to invalidity proceedings between Phonebook of the World and Seat Pagine Gialle SpA,
THE GENERAL COURT (Fourth Chamber),
composed of I. Pelikánová, President, K. Jürimäe and M. van der Woude (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 17 November 2011,
having regard to the response of OHIM lodged at the Court Registry on 23 February 2012,
having regard to the response of the intervener lodged at the Court Registry on 15 March 2012,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure pursuant to Article 135a of the Rules of Procedure of the Court,
gives the following
Judgment
Background to the dispute
1 On 1 April 1996, Seat Pagine Gialle SpA – the intervener – filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p.1)).
2 The mark for which registration was sought is the word sign PAGINE GIALLE.
3 The goods and services for which registration was sought are in Classes 16 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 16: ‘Printed matter of all kinds, including books, magazines, yearbooks, catalogues, telephone directories’;
– Class 35: ‘Advertising and business services’.
4 By decision of 15 July 1999, the examiner granted registration of the mark applied for.
5 Initially, the examiner found that, for the Italian public, the mark PAGINE GIALLE was descriptive of the goods and services at issue for the purposes of Article 7(1)(c) of Regulation No 40/94 (now Article 7(1)(c) of Regulation No 207/2009). The examiner noted that the expression ‘pagine gialle’, meaning ‘yellow pages’ in Italian, was commonly used to designate directories listing business and professional telephone numbers and the related services, namely advertising in those directories. Subsequently, however, on the basis of a survey produced by the intervener, the examiner found that, in Italy, the sign PAGINE GIALLE had become distinctive through use for the purposes of Article 7(3) of Regulation No 40/94 (now Article 7(3) of Regulation No 207/2009). The examiner found that three quarters of the people interviewed perceived the sign as the intervener’s trade mark.
6 The Community trade mark application was published in Community Trade Marks Bulletin No 70/1999 of 6 September 1999. The mark was registered on 10 October 2002.
7 On 27 November 2007, pursuant to Article 51(1)(a) of Regulation No 40/94 (now Article 52(1)(a) of Regulation No 207/2009), Phonebook of the World – the applicant – filed an application for a declaration of invalidity against the Community trade mark on the ground that that mark had been registered in breach of Article 7(1)(c) of Regulation No 40/94 and Article 7(1)(d) of that regulation (now Article 7(1)(d) of Regulation No 207/2009). The applicant submitted, inter alia, that the sign PAGINE GIALLE was a translation into Italian of the words ‘yellow pages’, which is a common expression used to designate business telephone directories.
8 By decision of 23 April 2010, the Cancellation Division dismissed the application for a declaration of invalidity in its entirety and confirmed that in Italy the mark had become distinctive through use for the purposes of Article 7(3) of Regulation No 207/2009.
9 On 9 June 2010, the applicant filed a notice of appeal with OHIM against the Cancellation Division’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009.
10 By decision of 4 August 2011 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the applicant’s appeal.
11 First of all, the Board of Appeal stated, in paragraph 24 of the contested decision, that the parties did not deny that, in principle, the sign PAGINE GIALLE was caught by the grounds for refusal laid down in Article 7(1)(b) to (d) of Regulation No 207/2009 in relation to ‘the Italian-speaking public’, but the sign had become distinctive through use in Italy for the purposes of Article 7(3) of Regulation No 207/2009.
12 As is apparent from paragraph 25 of the contested decision, the applicant’s main argument before the Board of Appeal was based on the fact that the relevant public to be considered in the assessment of the grounds for refusal under Article 7(1) of Regulation No 207/2009 ought not to be limited to Italian-speaking consumers since, throughout the European Union, the average consumer would recognise the expression ‘pagine gialle’ as the Italian translation of ‘yellow pages’.
13 The Board of Appeal accordingly found, in paragraph 26 of the contested decision, that the points at issue were, first, whether the words ‘pagine gialle’ were understood by consumers who do not speak Italian and, second, how those consumers perceived those words in relation to the goods and services concerned.
14 In that connection, the Board of Appeal found, in paragraph 28 of the contested decision, that the applicant had not shown that EU consumers had a knowledge of Italian enabling them to understand the expression ‘pagine gialle’. In addition, the Board of Appeal found, in paragraphs 29 to 31 of the contested decision, that the applicant had failed to prove that those consumers would understand that expression as being the translation of the Spanish words ‘páginas amarillas’, the Portuguese words ‘paginas amarelas’, the English words ‘yellow pages’ or the French words ‘pages jaunes’.
15 On that basis, the Board of Appeal found, in paragraph 34 of the contested decision, that EU consumers who do not understand Italian would not understand the meaning of the expression ‘pagine gialle’ and would not see it as a description of the goods and services concerned, but rather as a wholly fanciful expression with a distinctive character. The Board of Appeal also found that that expression had not become customary in the current language or the practices of non-Italian speaking consumers.
16 Accordingly, the Board of Appeal concluded, in paragraph 34 of the contested decision, with reference to all the Member States of the European Union with the exception of Italy, that the expression ‘pagine gialle’ was not ‘devoid of any distinctive character’ for the purposes of Article 7(1)(b) of Regulation No 207/2009; nor was it descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009 or generic for the purposes of Article 7(1)(d) of that regulation. Consequently, it was not necessary for the Community trade mark proprietor to produce evidence, in reliance on Article 7(3) of Regulation No 207/2009, that the expression had become distinctive in relation to the goods or services concerned, capable of distinguishing them from those of other undertakings in all the Member States of the European Union apart from Italy, since the sign PAGINE GIALLE had such distinctive character ab initio in all those territories.
Forms of order sought by the parties
17 The applicant claims that the Court should:
– annul the contested decision;
– cancel the registration of the mark PAGINE GIALLE in respect of the goods and services in Classes 16 and 35;
– order OHIM to pay the costs.
18 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
19 In support of its action, the applicant raises, in essence, a single plea in law alleging infringement of Article 7(1)(b) to (d) of Regulation No 207/2009, read in conjunction with Article 52(1)(a) of that regulation.
20 The applicant submits that ‘pages jaunes’ in French – or ‘yellow pages’ in English – is descriptive of business telephone directories for the purposes of Article 7(1)(c) of Regulation No 207/2009 and, on that account, also devoid of any distinctive character for the purposes of Article 7(l)(b) of that regulation. The applicant also submits that registration of ‘yellow pages’ as a Community trade mark is contrary to Article 7(1)(d) of Regulation No 207/2009 since it is a current generic term for those directories. According to the applicant, the same can be said of the translation of ‘yellow pages’ into the various languages spoken in Europe and especially of the Italian words ‘pagine gialle’.
21 The Court will examine the applicant’s arguments in an order which differs slightly from the order followed in the application. Before examining those arguments, the scope of the dispute before the Court must be defined.
The scope of the dispute
22 It should be pointed out that the precise extent of the infringement of Article 7(1)(b) to (d) of Regulation No 207/2009 alleged by the applicant is not clear from the application.
23 The applicant asserts that the mark PAGINE GIALLE lacks distinctive character, that the sign is descriptive and has become customary, but without indicating whether, in its submission, those grounds for refusal exist in relation to the Italian public or throughout the European Union.
24 However, in so far as the applicant does not deny that, in Italy, the Community trade mark has become distinctive through use in accordance with Article 7(3) of Regulation No 207/2009, it must be found that the plea alleging infringement of Article 7(1)(b) to (d) of that regulation is, in any event, ineffective as regards the Italian public’s perception of the Community trade mark.
25 The applicant asserts that a significant number of EU consumers are able to understand that the sign PAGINE GIALLE means ‘pages jaunes’ or ‘yellow pages’. In so doing, the applicant seems to be arguing that the grounds specified in Article 7(1)(b) to (d) of Regulation No 207/2009 could be relied upon throughout the European Union and not only in Italy.
26 Consequently, it must be considered whether the Board of Appeal infringed Article 7(1)(b) to (d) of Regulation No 207/2009, in that it did not accept that the mark in question lacks distinctive character; that it is descriptive; and that the sign has become customary throughout the European Union, with the exception of Italy.
Infringement of Article 7(1)(b) to (d) of Regulation No 207/2009, in that the Board of Appeal did not accept that those grounds for refusal existed throughout the European Union
27 It should be recalled that, under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered.
28 Article 7(1)(c) of Regulation No 207/2009 precludes the registration of trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service.
29 Article 7(1)(d) of Regulation No 207/2009 must be interpreted as precluding the registration of a trade mark only where the signs or indications of which the mark is exclusively composed have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which registration of that mark is sought (see, by analogy, Case C‑517/99 Merz & Krell [2001] ECR I‑6959, paragraph 31, and Case T‑237/01 Alcon v OHIM – Dr Robert Winzer Pharma (BSS) [2003] ECR II‑411, paragraph 37).
30 According to case-law, both the distinctiveness and the descriptiveness of a sign must be assessed, first, in relation to the goods or services in respect of which registration is applied for and, second, in relation to the perception which the relevant public has of that sign (Case T‑260/03 Celltech v OHIM (CELLTECH) [2005] ECR II‑1215, paragraph 28). The same aspects must be addressed in assessing whether a mark has become customary for the purposes of Article 7(1)(d) of Regulation No 207/2009 (see, to that effect, Case T‑322/03 Telefon & Buch v OHIM – Herold Business Data (WEISSE SEITEN) [2006] ECR II‑835, paragraph 49).
31 In the present case, the Board of Appeal was fully entitled to find, in paragraphs 25 and 26 of the contested decision, that the relevant public consisted of average consumers in the European Union, with the exception of Italy. The parties are in disagreement before the Court, however, as to that public’s knowledge of languages and its perception of the sign.
32 In the first place, the applicant asserts that Italian is one of the main languages of the European Union since, in all EU countries, there is a large community of citizens of Italian origin and Italian is taught as a foreign language. That being so, there is no doubt that at least 30 million consumers in Europe, outside Italy, are able to understand that ‘pagine gialle’ means ‘yellow pages’. It follows, according to the applicant, that the Board of Appeal refused to apply in full its own finding that the expression ‘pagine gialle’ is devoid of any distinctive character in Italian.
33 OHIM and the intervener dispute the applicant’s arguments.
34 In that connection, it should be noted that the only specific evidence adduced by the applicant to show the relevant public’s knowledge of Italian is a table indicating that over 200 000 pupils in France studied Italian each year between 1997 and 2007. In that regard, the intervener rightly points out, in any event, that that document was produced for the first time before the Court. The document is therefore inadmissible and cannot be taken into account for the purposes of the present proceedings (see, to that effect, Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 54).
35 The Board of Appeal, on the other hand, based its analysis of the relevant public’s knowledge of languages on a survey (Eurobarometer) conducted in 2006 by the European Commission. That survey, the evidential value of which has not been disputed by the applicant, in no way identifies Italian as one of the second languages generally known by the relevant European public.
36 It follows that the Board of Appeal was fully entitled to conclude, in paragraph 28 of the contested decision, that Italian is not one of the foreign languages with which almost all the relevant public would be wholly familiar.
37 In the second place, the applicant seeks to rely on the total, full and direct application of the WEISSE SEITEN case-law. In that judgment, the General Court held that the German expression ‘weisse Seiten’ (‘white pages’) could not be registered as a Community trade mark for telephone directories for private individuals, because it had become customary as a generic term for those directories.
38 OHIM and the intervener dispute the applicant’s arguments.
39 In that connection, it should be noted that the words ‘weisse Seiten’ and ‘pagine gialle’ belong to two different languages, German and Italian respectively. In WEISSE SEITEN, the question whether the EU public understood the German words ‘weisse Seiten’ did not arise, since the relevant public in that case was German-speaking. As is apparent from paragraphs 34 to 36 above, there is no evidence in the present case to demonstrate that the relevant EU public, outside Italy, is able to understand the meaning of the words ‘pagine gialle’. In addition, by contrast with the present case, the proprietor of the mark WEISSE SEITEN had not claimed that the sign had become distinctive through use for the purposes of Article 7(3) of Regulation No 207/2009.
40 It must therefore be concluded that the present case cannot be decided on the basis of the considerations taken into account by the General Court in WEISSE SEITEN.
41 In the third place, the applicant refers to official texts of the EU institutions, to historical texts and also to websites, in order to show that, for over one hundred years, the various language versions of the expression ‘pagine gialle’ have described the market in business telephone directories and that, in consequence, that expression would not be perceived as a mark enabling the goods of a specific undertaking to be identified. The applicant further submits that, in its decision of 19 March 2002 (Case R 1161/2000‑1), the First Board of Appeal of OHIM acknowledged that ‘[one] cannot claim a private right on any translation of the word YELLOW PAGES’.
42 OHIM and the intervener dispute the applicant’s arguments.
43 In that connection, it must be found that the numerous references made by the applicant to official texts, historical texts and to websites are irrelevant. The applicant fails to show that EU consumers are able to make a connection between the Italian expression ‘pagine gialle’ and the equivalent expressions in other languages of the European Union. All of those texts refer to the use of the terms ‘yellow pages’ and ‘white pages’ in the official languages of the States concerned or in the languages understood there, but give no indication as to the understanding of those terms in other languages.
44 As regards the decision of the First Board of Appeal of OHIM of 19 March 2002, the applicant has misinterpreted paragraph 25 of that decision. The Board of Appeal simply stated that the proprietor of the Community trade mark YELLOW PAGES could not claim a private right over any translation of the expression ‘yellow pages’ into other languages, such as the Italian translation ‘pagine gialle’. Moreover, in paragraph 24 of that decision, the Board of Appeal found that average English-speaking consumers did not understand the meaning of the Italian expression ‘pagine gialle’. Accordingly, the decision of the First Board of Appeal of OHIM of 19 March 2002 is, in any event, more likely to confirm the Board of Appeal’s analysis in the contested decision than to cast doubt upon it.
45 It follows from all the foregoing considerations that the Board of Appeal did not err in finding, in paragraph 34 of the contested decision, that the relevant public was not able to understand the expression ‘pagine gialle’ as a description of the goods and services concerned or as a customary name for those goods and services and that, on the contrary, the relevant public would see it as a fanciful expression with a distinctive character.
46 In those circumstances, the Board of Appeal did not infringe Article 7(1)(b) to (d) of Regulation No 207/2009 by not accepting that the grounds for refusal referred to in those provisions existed throughout the European Union, with the exception of Italy.
47 Consequently, the action must be dismissed, and there is no need to consider the admissibility of the applicant’s second head of claim.
Costs
48 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders Phonebook of the World to pay the costs.
Pelikánová | Jürimäe | van der Woude |
Delivered in open court in Luxembourg on 20 November 2012.
[Signatures]