Judgment — ECLI:EU:T:2006:87
Date: 2006-03-16
Language of the case: German
Court formation: Third Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Word marks;Marks consisting exclusively of signs or indications which have become customary
Procedure: Action for annulment - unfounded;Action for annulment - inadmissible
Origin: Austria

Summary of the Judgment 1. Community trade mark – Surrender, revocation and invalidity – Absolute grounds of invalidity (Council Regulation No 40/94, Arts 7(1)(d) and 51(1)(a)) 2. Community trade mark – Surrender, revocation and invalidity – Absolute grounds of invalidity (Council Regulation No 40/94, Arts 7(1)(c) and 51(1)(a)) 1. The term WEISSE SEITEN should not have been registered as a Community trade mark as regards ‘magnetic data carriers and recorded storage media for data processing installations and equipment, in particular tapes, discs, CD-ROMs’ and ‘printed matter, reference works, classified directories’ in Classes 9 and 16, respectively, of the Nice Agreement by reason of the absolute ground for refusal in Article 7(1)(d) of Regulation No 40/94 on the Community trade mark relating to the customary nature of the trade mark, since it was established that, for the average German-speaking consumer, the term ‘weiβe Seiten’ had become customary, on the date on which the application for registration of the mark was lodged, as a generic term for the telephone directory for private individuals not only on paper, but also in electronic form. (see paras 66, 71-72) 2. The term WEISSE SEITEN should not have been registered as regards ‘magnetic data carriers and recorded storage media for data processing installations and equipment, in particular tapes, discs, CD-ROMs’; ‘paper, cardboard and goods made from these materials, not included in other classes; printed matter, reference works, classified directories; artists’ materials; office requisites (except furniture); instructional and teaching material (except apparatus)’; ‘publishing services, in particular the publication of texts, books, magazines, newspapers’ and ‘editing of written texts’ in Classes 9, 16, 41 and 42, respectively, of the Nice Agreement by reason of the absolute ground for refusal in Article 7(1)(c) of Regulation No 40/94 on the Community trade mark relating to the descriptive nature of the trade mark, since, from the point of view of the average German-speaking consumer, the link between the mark and the characteristics of all the goods and services in dispute is sufficiently close to fall within the scope of the prohibition laid down in that provision. (see para. 108)