In Phonebook of the World v Office for Harmonisation in the Internal Market (OHIM) (Case T-589/1 1, November 20 2012), the General Court (Fourth Chamber) has dismissed an action brought by Phonebook of the World against a decision of the Second Board of Appeal of OHIM concerning the validity of the Community trademark (CTM) PAGINE GIALLE, owned by Seat Pagine Gialle SpA.

On April 1 1996 Seat Pagine Gialle filed an application for the registration of the mark PAGINE GIALLE as a CTM for goods and services in Classes 16 and 35 of the Nice Classification.

The mark was initially rejected on the grounds that it was descriptive. According to the examiner, consumers could easily perceive the mark PAGINE GIALLE as being the translation of the corresponding English expression (‘yellow pages’), which is commonly used to designate directories listing business and professional telephone numbers and related services, namely advertising in those directories. In response to the provisional refusal, Seat Pagine Gialle submitted a survey which clearly demonstrated that three quarters of the people interviewed perceived the sign as the trademark of Seat Pagine Gialle. The objection was thus overcome and the mark was registered in October 2002.

On November 27 2007 Phonebook of the World filed an application for a declaration of invalidity of the mark. The invalidity proceedings were based on the argument that PAGINE GIALLE is a translation into Italian of the words ‘yellow pages’, which is a common expression used to designate business telephone directories. The action was dismissed by the Cancellation Division on the grounds that, in Italy, the mark had acquired distinctiveness in consequence of the use which had been made of it.

Phonebook of the World’s appeal was dismissed by the Second Board of Appeal of OHIM on August 4 2011. In particular, the board confirmed that, even though the parties did not deny that, in principle, PAGINE GIALLE may be considered as descriptive, the mark had become distinctive through use in Italy. The board also found that Phonebook of the World had not demonstrated that:

– European consumers had a knowledge of Italian enabling them to understand the expression ‘pagine gialle’; and
– those consumers would understand that expression ‘pagine gialle’ 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’.

Accordingly, the Board ofAppeal concluded that, with reference to all the EU member states (with the exception of Italy), the expression ‘pagine gialle’ was not devoid of any distinctive character; however, with reference to the Italian territory, the same expression had acquired distinctiveness in consequence of the use which had been made of it.

Phonebook of the World requested that the General Court annul the board’s decision and cancel the registration of the mark PAGINE GIALLE.

The court first noted that Phonebook of the World asserted that the mark PAGINE GIALLE lacked distinctive character, was descriptive and had become customary, but without specifying whether those grounds for refusal existed in relation to the Italian public or throughout the European Union. In fact, Phonebook of the World did not deny that, in Italy, the sign PAGINE GIALLE had become distinctive through use. However, according to Phonebook of the World, a significant number of EU consumers are able to understand that the sign PAGINE GIALLE means ‘pages jaunes’ or ‘yellow pages’. Therefore, it seems that Phonebook of the World’s claim regarding the lack of distinctive character of the mark could be relied upon throughout the European Union, and not only in Italy.

Phonebook of the World also asserted that Italian is one of the main languages of the European Union, and that at least 30 million consumers in Europe, outside Italy, are able to understand that ‘pagine gialle’ means ‘yellow pages’. In contrast, the Board ofAppeal based its analysis of the relevant public’s knowledge of languages on a survey conducted in 2006 by the European Commission; that survey demonstrated that Italian was not one of the second languages generally known by the relevant European public.

On the basis of the above considerations, the General Court confirmed that the relevant public was not able to understand the expression ‘pagine gialle’ as a description of the goods and services under reference or as a common name for those kind of goods and services. According to the court, it was likely that the public would perceive the mark as a fanciful expression with a distinctive character.

The action was thus dismissed.