16 March 2006
Press and Information
PRESS RELEASE No 25/06
16 March 2006
Judgment of the Court of First Instance in Case T-322/03
Telefon & Buch Verlagsgesellschaft mbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) – Herold Business Data GmbH & Co. KG
The Court of First Instance upholds the decision
of OHIM to cancel the Community word mark ‘WEISSE SEITEN’
The term ‘weiâe Seiten’ has become a synonym, in the German language, for telephone directories for private individuals
In 1996, the company Telefon & Buch Verlagsgesellschaft filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) in respect of the word sign WEISSE SEITEN to cover various goods, including IT goods and printed matter, reference works and classified directories.
Subsequent to the registration of that Community trade mark in 1999, the company Herold Business Data sought cancellation of the registration.
In 2003 the Board of Appeal of OHIM cancelled the mark WEISSE SEITEN for IT goods, discs, CD-ROMs, printed matter, reference works and classified directories because ‘weiβe Seiten’ was a customary term signifying telephone directories for private individuals. It also cancelled the mark for stationery, office requisites, publishing services and editing of written texts on the ground that the sign was descriptive and devoid of any distinctive character.
Telefon & Buch Verlagsgesellschaft challenged OHIM’s decision before the Court of First Instance of the European Communities. It submitted that the Board of Appeal’s assessment that the term ‘weiβe Seiten’ had become part of the German language as a synonym for ‘alphabetisches Teilnehmerverzeichnis’ (telephone directories for private individuals) before the date of application for registration is incorrect.
The Court, first, pointed out that the documents produced by the applicant for cancellation of the regulation, such as the various documents from the Austrian postal service for example, show that ‘weiβe Seiten’ was a term which, on the date of application for registration of the mark WEISSE SEITEN, had already become generic in Germany for telephone directories for private individuals. Given that Telefon & Buch Verlagsgesellschaft did not draw any distinction within the generic category ‘printed matter, reference works, classified directories’, to which telephone directories in paper form belong, the mark had to be declared invalid for the whole of that category.
Next, the Court noted that telephone directories for private individuals are available not only on paper, but also in electronic form, on the internet or on CD-ROM. Therefore, the term ‘weiβe Seiten’ must also be considered to be a customary term for electronic directories, as was also apparent from the internet research carried out during the administrative procedure before OHIM. Given that Telefon & Buch Verlagsgesellschaft did not draw any distinction between the goods within the category ‘magnetic data carriers and recorded storage media for data processing installations and equipment, in particular tapes, discs, CD-ROMs’, the mark had to be cancelled in respect of all those goods.
In addition, since the term has become a synonym, in the German language, for telephone directories for private individuals, it may also be considered to be descriptive of the products for which it is regarded as being a customary term. Given that publishing services and editing of written texts concern the creation and drawing-up of those products, the term ‘weiβe Seiten’ may also be regarded as descriptive of those services, since it describes their intended purpose.
As regards the other goods, such as stationery and office requisites, the term in question can be understood in the sense of ‘weiβfarbige Seiten’ (white-coloured pages) and can be used as a synonym of ‘weiβfarbige Blätter’ (white-coloured sheets). Therefore, since Telefon & Buch Verlagsgesellschaft did not draw any distinction within the various categories, the mark is also descriptive of all those goods.
The Court concluded that the link between the mark WEISSE SEITEN and the characteristics of all the goods and services in dispute is so close that the mark, being descriptive, should not have been registered.
Consequently, the Court dismissed the action brought by Telefon & Buch Verlagsgesellschaft.
REMINDER: An appeal, limited to points of law only, may be brought before the Court of Justice of the European Communities against a decision of the Court of First Instance, within two months of its notification.