Action brought on 17 November 2011 - Phonebook of the World v OHIM - Seat Pagine Gialle (PAGINE GIALLE)

(Case T-589/11)

Language in which the application was lodged: English

Parties

Applicant: Phonebook of the World (Paris, France) (represented by: A. Bertrand, lawyer)

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

Other party to the proceedings before the Board of Appeal: Seat Pagine Gialle SpA (Milan, Italy)

Form of order sought

Annul the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 4 August 2011 in case R 1541/2010-2;

Annul the registration of the Community trade mark "PIAGINE GIALLE" No 161380, registered in classes 16 and 35 by the other party to the proceedings before the Board of Appeal; and

Order the defendant to pay the costs of the present proceedings.

Pleas in law and main arguments

Registered Community trade mark in respect of which a declaration of invalidity has been sought: The word mark "PAGINE GIALLE", for goods and services in classes 16 and 35 - Community trade mark registration No 161380

Proprietor of the Community trade mark: The other party to the proceedings before the Board of Appeal

Applicant for the declaration of invalidity of the Community trade mark: The applicant

Grounds for the application for a declaration of invalidity: The party requesting the declaration of invalidity grounded its request for invalidity pursuant to Article 52(1)(a) of Council Regulation (EC) No 207/2009, namely that the Community trade mark was registered in breach of the provisions of Article 7(1)(c) and (d) of Council Regulation (EC) No 207/2009

Decision of the Cancellation Division: Rejected the request for declaration of invalidity

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: Infringement of Articles 52(1)(a) in conjunction with Articles 7(1)(b) to 7(1)(d) of Council Regulation No 207/2009, as the Board of Appeal refused to apply the general principles of community law, and especially the principles set by the judgement rendered by the Court of First Instance in case T-322/03, Telefon & Buch / OHMI - Herold Business Data (WEISSE SEITEN), and also refused to apply its own findings, that the words "PAGINE GIALLE" were devoid of any distinctive character for the Italian public.

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