Action brought on 11 May 2006 - Xentral v OHIM - Pages Jaunes (Word mark 'PAGESJAUNES.COM')

(Case T -134/06)

Language in which the application was lodged: French

Parties

Applicant: Xentral LLC (Miami, United States of America) (represented by: A. Bertrand, lawyer)

Defendant: Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

Other party to the proceedings before the Board of Appeal: Pages Jaunes SA (Sèvres, France)

Form of order soughtThe applicant asks the Court to:

set aside Decision R 708/2005-1 dated 15 February 2006;

uphold the Community trade mark 'PAGESJAUNES.COM'

declare that all costs are the responsibility of the Board of Appeal of OHIM.

Pleas in law and main arguments

Applicant for a Community trade mark: Xentral LLC

Community trade mark concerned: Word mark 'PAGESJAUNES.COM' for goods in Class 16 (application no 1 880 871)

Proprietor of the mark or sign cited in the opposition proceedings: Pages Jaunes SA

Mark or sign cited in opposition: National word mark 'LESPAGESJAUNES' for

goods in Class 16, the business name and the commercial name 'PAGES JAUNES'

Decision of the Opposition Division: Opposition upheld for all the goods disputed

Decision of the Board of Appeal: Appeal rejected

Pleas in law: The applicant relies on its previous right to the domain name 'PAGESJAUNES.COM' which, in its view, is enforceable against the opposing party's trade mark and business name.

It also relies on an infringement of Article 7(1)(c) and (d) of Council Regulation 40/94, in that the opposing party's trade mark is customary and has very little distinctive character.

It claims that its trade mark, in respect of which registration was sought, does not compromise the business name or commercial name of the opposing party.

The applicant also disputes the renown of the opposing party's trade mark.

____________