• Alicante Abstracts

    A White Flag for White Pages

    When its CTM for WEISSE SEITEN was registered for recorded media, publications and publishing services, Telefon & Buch Verlagsgesellschaft mbH must scarcely have believed its luck.

    The mark, German for “white pages,” corresponds to the name commonly used in countries around the world to refer to residential telephone directories. It should not, therefore, have been surprising that the Austrian publisher’s good fortune was short-lived. The Court of First Instance set the seal on the invalidation of the CTM on the grounds that the mark was descriptive and customary in the trade in Austria.

     

    OHIM Makes a Call

    Telefon & Buch filed its CTM in October 1996 in Classes 9, 16, 41 and 42 and it was registered uneventfully in September 1999.

    An Austrian competitor, Herold Business Data GmbH & Co. KG., filed an invalidation action in February 2000. It asserted, in particular, that WEISSE SEITEN had become customary in the current language of the trade in Austria for telephone directories at the time the application was filed in October 1999. Herold further argued that the mark was, moreover, descriptive of a characteristic of the goods, referring to residential telephone directories with which the term WEISSE SEITEN had become synonymous.

    Herold did its homework. In evidence, it presented inter alia the following:

    • a 1995 communication from the European Commission to the Council and the European Parliament on the telephone directories market in Europe, which included references to WEISSE SEITEN, without explanation, in relation to residential telephone directories;

    • leaflets from the Austrian post office relating to telephone directories, using WEISSE SEITEN, again without explanation, to denote residential telephone directories; and

    • order forms for telephone directories in Austria from 1993 – 1995, including use of WEISSE SEITEN to denote residential telephone directories.

     

    OHIM and its Board of Appeal held that the CTM was invalid in respect of inter alia “magnetic data carriers and recorded storage media for data processing installations and equipment, in particular tapes, discs, CD-ROMs” in Class 9, “printed matter,” “reference works” and classified directories” in Class 16, “publishing services” in Class 41 and “editing of written texts” in Class 42.

     

    The CFI Joins In

    On Telefon & Buch’s appeal to the CFI, the Court rejected T&B’s assertion that OHIM should have followed an Austrian court decision finding that WEISSE SEITEN was distinctive in respect of goods other than “paper and printed matter.” OHIM, the CFI held, was an autonomous system not bound by the decisions of national courts, even where they concerned identical subject matter.

    The CFI considered that whether WEISSE SEITEN had become customary in the current language of the trade had to be considered from the point of view of the average German-speaking consumer in general. In finding that it had so become, the CFI was strongly influenced by the materials filed by Herold.

    In particular, the CFI found that the 1995 Commission communication showed descriptive, generic use of WEISSE SEITEN as early as 1992. Likewise, the Austrian post office materials showed that the term had been used descriptively since at least 1992. Lastly, the order forms that Herold had itself used for customers in the period 1993 to 1995 proved that it had also been using the term descriptively prior to the filing of the challenged CTM.

    The CFI considered that, taken together, these materials were compelling evidence that the mark had become customary in the German-speaking trade in residential telephone directories in Austria before the CTM was filed in 1996.

    As regards the other goods and services for which the CTM had been invalidated, the CFI upheld the BoA’s view that telephone directories were commonly supplied in electronic format, which supported the finding in relation to Class 9.

    As regards the invalidation based on descriptiveness, the CFI found no error on the part of the BoA, taking into account the evidence filed by Herold. A single possible descriptive meaning would suffice to render the mark objectionable under this ground, and WEISSE SEITEN,

    as a common synonym for residential telephone directories, had such a meaning for the invalidated goods in Classes 9 and 16. Publishing and editing services were closely linked to the directories themselves, and the decision in respect of Classes 41 and 42 was therefore also upheld.

     

    Comment

    The outcome for WEISSE SEITEN is no surprise. What might raise eyebrows is the fact that it was ever accepted for registration at all.

    Nonetheless, in a vast, multi-lingual European Union, it is understandable that an administrative body such as OHIM occasionally makes mistakes. Not all applications profit (or suffer) from the rigour of an examiner whose first language matches that of the application, and who has the cultural experience to enable all possible descriptive meanings of the mark to be plumbed before registration is granted.

    This decision should hearten those who, for commercial reasons, need to challenge OHIM’s wisdom in accepting certain marks. There is a presumption that CTMs are validly registered, but that assumption can be successfully challenged with the right evidence. What this case shows, above all, is how well-oiled and effective such an attack can be with focussed evidence from the relevant period.