CELEX: 62006TJ0134
Language: en
Date: 2007-12-13
Title: Judgment of the General Court (Third Chamber) of 13 December 2007.#Xentral LLC v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).#Case T-134/06.

Case T-134/06
      Xentral LLC
      v
      Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
      (Community trade mark – Opposition proceedings – Application for the Community word mark PAGESJAUNES.COM – Earlier national figurative mark LES PAGES JAUNES – Domain name ‘pagesjaunes.com’ – Relative grounds for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94)
      Summary of the Judgment
      1.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition
            by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood
            of confusion with the earlier mark
      (Council Regulation No 40/94, Art. 8(1)(b))
      2.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition
            by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood
            of confusion with the earlier mark
      (Council Regulation No 40/94, Art. 8(1)(b))
      1.      For the average French consumer, there is a likelihood of confusion between the word sign PAGESJAUNES.COM registration of
         which as a Community trade mark is sought for ‘Printed matter, newspapers, periodicals, directories’ within Class 16 of the
         Nice Agreement and the word mark LES PAGES JAUNES previously registered in France for the same goods, given that the goods
         in question are identical and given the similarity between the opposing signs at both the visual and aural levels and the
         conceptual level. French consumers could think that the trade mark applied for, PAGESJAUNES.COM, is the internet version of
         the paper-based directory bearing the LES PAGES JAUNES trade mark and that, therefore, the two products are offered by the
         same undertaking.
      
      (see paras 64, 72)
      2.      Although, when examining an opposition under Article 8(1)(b) of Regulation No 40/94 on the Community trade mark by the proprietor
         of the earlier trade mark, the distinctive character of that mark must be taken into account when assessing the likelihood
         of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark
         of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the
         signs and between the goods or services covered.
      
      (see para. 70)
JUDGMENT OF THE COURT OF FIRST INSTANCE (Third Chamber)
      13 December 2007 (*)
      
      (Community trade mark – Opposition proceedings – Application for the Community word mark PAGESJAUNES.COM – Earlier national figurative mark LES PAGES JAUNES – Domain name ‘pagesjaunes.com’ – Relative grounds for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94)
      In Case T‑134/06,
      Xentral LLC, established in Miami, Florida (United States), represented by A. Bertrand, lawyer,
      
      applicant,
      v
      Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
      
      defendant,
      the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
      Pages jaunes SA, established in Sèvres (France), represented by C. Bertheux Scotte, B. Potot and B. Corne, lawyers,
      
      ACTION brought against the decision of the First Board of Appeal of OHIM of 15 February 2006 (Case R 708/2005-1), in respect
         of opposition proceedings between Pages jaunes SA and Xentral LLC,
      
       
      THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Third Chamber),
      composed of M. Jaeger, President, V. Tiili and T. Tchipev, Judges,
      Registrar: K. Pocheć, Administrator,
      having regard to the application lodged at the Registry of the Court of First Instance on 11 May 2006,
      having regard to the response of OHIM lodged at the Registry on 24 November 2006,
      having regard to the response of the intervener lodged at the Registry of the Court on 22 November 2006,
      further to the hearing on 7 June 2007,
      gives the following
      Judgment
       Background to the dispute
      1        On 21 September 2000, Prodis Inc. filed an application for a Community trade mark at the Office for Harmonisation in the Internal
         Market (Trade Marks and Designs) (OHIM) under Council Regulation No 40/94 of 20 December 1993 on the Community trade mark
         (OJ 1994 L 11, p. 1), as amended.
      
      2        The trade mark in respect of which registration was sought is the word sign PAGESJAUNES.COM.
      
      3        The goods in respect of which registration was applied for are in Class 16 of the Nice Agreement concerning the International
         Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended,
         and correspond to the following description: ‘Printed matter, newspapers, periodicals, directories’.
      
      4        By letter of 21 February 2002 the examiner informed Prodis that the sign in question was not capable of being registered by
         virtue of Article 7(1)(b) of Regulation No 40/94 since it is devoid of any distinctive character. According to the examiner,
         the relevant public will perceive the sign as the electronic address of any one of the undertakings which market professional
         directories.
      
      5        In the absence of any observations on his objection, the examiner refused the application for registration by decision of
         4 June 2002 on the basis of Article 7(1)(b) of Regulation No 40/94.
      
      6        On 3 July 2002 Prodis filed notice of appeal at OHIM in accordance with Articles 57 to 62 of Regulation No 40/94 against the
         refusal to register the trade mark PAGESJAUNES.COM.
      
      7        By letter of 4 October 2002, following an interlocutory revision under Article 60 of Regulation No 40/94, the examiner informed
         Prodis that, after consideration, its application for registration had been accepted for the purposes of publication.
      
      8        That application was published in Community Trade Marks Bulletin No 81/2002 of 14 October 2002.
      
      9        On 6 January 2003, the intervener, Pages jaunes SA, gave notice of opposition under Article 42 of Regulation No 40/94 to registration
         of the trade mark applied for. That opposition was based, first, on the company name and trade name Pages jaunes and, secondly,
         on French registration No 99800903, dated 2 April 1999, for the figurative mark LES PAGES JAUNES, covering goods and services
         in Classes 9, 16, 35, 38, 41 and 42, reproduced below:
      
      
      10      The opposition was against all the goods covered by the PAGESJAUNES.COM trade mark application. It was based on all the goods
         and services covered by the earlier trade mark, inter alia ‘Printed matter, newspapers, periodicals, directories’ in Class
         16.
      
      11      The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and (4) of Regulation No 40/94.
         The renown of the earlier trade mark, the company name and the trade name was also relied upon and was based on their intensive
         and long-standing use, in particular to designate directories and publications.
      
      12      By decision of 28 April 2005 the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No
         40/94. It found that there was a likelihood of confusion, taking into account the identical nature of the goods in question,
         the strong aural and conceptual similarity between the opposing marks and the renown of the earlier trade mark in France.
         It also held that, even though the expression ‘pages jaunes’ could be considered commonplace in a number of countries and,
         to a certain extent, in France, Prodis had not proven that the earlier trade mark has become commonplace ‘on account of’ the
         intervener.
      
      13      On 16 June 2005 Prodis filed notice of appeal at OHIM, in accordance with Articles 57 to 62 of Regulation No 40/94, against
         the decision of the Opposition Division.
      
      14      By decision of 15 February 2006 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. It held
         that the possible earlier right of Prodis, that is the domain name ‘pagesjaunes.com’, had to be ignored, that it was not for
         OHIM to rule on the nullity of national trade marks, and that nothing in the documents before it substantiated the argument
         that, for a French consumer, the expression ‘pages jaunes’ was not distinctive or was descriptive for publications, in particular
         for telephone directories. According to the Board of Appeal, on the contrary, that expression had a ‘normal distinctive character’
         since the colour in which it is represented is arbitrary and the expression had not become generic. The Board of Appeal held
         that the dominant component of the two opposing marks was made up of the same expression ‘pages jaunes’ and that the similarity
         between those marks was striking. In conclusion, it held that, given that the relevant goods were identical, there was a likelihood
         of confusion in France, on the ground that the trade mark applied for is perceived as the internet version of the paper-based
         directory bearing the LES PAGES JAUNES trade mark and that the goods in question are therefore considered to come from the
         same undertaking.
      
      15      The application for the trade mark PAGESJAUNES.COM was transferred to the applicant, Xentral LLC. That transfer was recorded
         in the Register of Community trade marks on 2 May 2006.
      
       Forms of order sought
      16      The applicant claims that the Court should:
      
      –        annul the contested decision;
      –        validate the trade mark PAGESJAUNES.COM;
      –        order the Board of Appeal of OHIM to pay the costs.
      17      OHIM contends that the Court should:
      
      –        dismiss as inadmissible the second head of claim;
      –        dismiss the remainder of the action;
      –        order the applicant to pay the costs.
      18      The intervener contends that the Court should:
      
      –        uphold the contested decision;
      –        dismiss the application for registration of the trade mark PAGESJAUNES.COM in its entirety;
      –        order the applicant to pay the costs.
      19      At the hearing the applicant withdrew its second head of claim and the Court took formal notice of that withdrawal. The applicant
         specified in addition that its third head of claim was to be understood as seeking an order for costs against OHIM, of which
         the Court also took formal notice.
      
      20      At the hearing the intervener withdrew its second head of claim, and the Court took formal notice of that withdrawal.
      
       The admissibility of the documents produced for the first time before the Court 
      21      The intervener claims that Annexes 51 to 53, 77 and 78 to the application are new documents in that they were not produced
         before OHIM. Therefore, those documents are inadmissible.
      
      22      Annexes 51 to 53 and 77 to the application – Annex 52 being the same as Annex 77 – are extracts from the Annuaire – Almanach du commerce, de l’industrie, de la magistrature et de l’administration (Directory – Trade, Industry, Judicial Authorities and Administration Almanac) (Didot-Bottin) of 1887, 1886 and 1891 which
         were not included in the administrative file before OHIM. Annex 78 contains extracts from the register of the Institut national
         de la propriété industrielle (INPI) (the National Institute for Industrial Property) relating to those trade marks filed in
         France containing the word element ‘pages jaunes’, which were also not produced before OHIM.
      
      23      Those documents, produced for the first time before the Court, cannot therefore be taken into consideration. The purpose of
         actions before the Court of First Instance is to review the legality of decisions of the Boards of Appeal of OHIM for the
         purposes of Article 63 of Regulation No 40/94, so it is not the Court’s function to review the facts in the light of documents
         produced for the first time before it. Accordingly, the abovementioned documents must be excluded, without it being necessary
         to assess their probative value (see Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 19, and the case-law cited).
      
       The admissibility of certain arguments put forward by the applicant
      24      OHIM claims that the applicant’s arguments, in relation to Article 8(4) of Regulation No 40/94, are inadmissible and in any
         case irrelevant, as the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 40/94 without
         examining the conditions for the application of Article 8(4) of that regulation. As that latter legal basis was also not examined
         by the Board of Appeal, the Court can review the legality of the contested decision only on the basis of Article 8(1)(b) of
         that regulation.
      
      25      The applicant puts forward arguments relating to the application of Article 8(1)(b) and (4) of Regulation No 40/94. However,
         the Opposition Division and the Board of Appeal upheld the opposition on the basis of Article 8(1)(b) of that regulation,
         deciding that there was a likelihood of confusion between the trade mark applied for and the earlier trade mark, which led
         to the refusal of the application for registration of the trade mark PAGESJAUNES.COM. Neither the Opposition Division nor
         the Board of Appeal carried out a comparison of the trade mark applied for with the company name or trade name of the intervener,
         which were relied upon by the intervener in support of its opposition based on Article 8(4) of Regulation No 40/94, since
         the existence of a relative ground for refusal was sufficient to uphold the opposition.
      
      26      It must be borne in mind, in that regard, that the purpose of the action before the Court of First Instance is to obtain a
         review of the legality of the decision of the Board of Appeal. That review of the legality of a decision by a Board of Appeal
         must therefore be carried out with regard to the issues of law raised before it (Case T-133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II-2737, paragraph 22, and Case T-364/05 Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL) [2007] ECR I-0000, paragraph 83).
      
      27      Therefore, it must be examined whether the Board of Appeal correctly held that a likelihood of confusion exists between the
         trade mark applied for and the earlier trade mark on the basis of Article 8(1)(b) of Regulation No 40/94, without it being
         necessary for the Court, which cannot take the place of OHIM as regards the assessment of the relative grounds for refusal,
         referred to in Article 8(4) of that regulation, to take into account the company name and the trade name relied on by the
         intervener in support of its opposition. Therefore, only the plea alleging infringement of Article 8(1)(b) of Regulation No
         40/94 must be examined.
      
      28      Moreover, OHIM contends that the applicant’s arguments intended to deny the claimed renown of the earlier mark are not relevant
         in the context of the present action. Since the Board of Appeal confirmed the existence of a likelihood of confusion by concerning
         itself with the ‘normal distinctive character’ of the earlier mark, it did not examine that mark’s renown acquired through
         use, which the intervener alleged in the course of proceedings before OHIM, or base its decision on that renown. 
      
      29      Since the Opposition Division found in its decision that the intervener had proven that its mark was well-known in France,
         which the applicant disputed in its appeal before the Board of Appeal, the issue of renown was part of the subject-matter
         of the dispute before the Board of Appeal. Therefore, the arguments put forward in that regard by the applicant are admissible.
      
       Substance
      30      According to the applicant the domain name ‘pagesjaunes.com’, of which it is the owner, must be regarded as an earlier right
         enforceable against the earlier mark. In addition, the earlier mark has a weak distinctive character and is even generic.
         Moreover, the trade mark applied for does not constitute an unlawful imitation of the earlier mark. Finally, according to
         the applicant, the intervener cannot rely on any renown attaching to the earlier mark.
      
      31      OHIM and the intervener contend that the Board of Appeal was fully entitled to find that a likelihood of confusion exists.
      
      32      At the outset, it is necessary to examine the applicant’s argument that its domain name ‘pagesjaunes.com’ should be regarded
         as an earlier right enforceable against the intervener’s earlier mark.
      
       The possible effects of an earlier right based on the domain name ‘pagesjaunes.com’
      33      The applicant claims that a domain name is a distinctive sign in the same way as a mark and gives rise to an earlier right.
         The domain name ‘pagesjaunes.com’ was registered on 9 April 1996, well before the earlier trade mark, registered on 2 April
         1999, on which the intervener based its opposition.
      
      34      According to the applicant, by decision of 21 August 2000, an administrative panel of the World Intellectual Property Organisation
         (WIPO) confirmed the applicant’s rights over the domain name ‘pagesjaunes.com’ and refused to grant the requests of France
         Télécom, which was the holder, at that time, of the French figurative trade marks PAGES JAUNES, filed in 1977.
      
      35      In that regard, the Board of Appeal, at point 10 of the contested decision, held that that argument had to be rejected, since
         ‘the examination which [OHIM] must carry out under Article 8(1) of [Regulation No 40/94] is restricted to the conflict between
         the Community trade mark applied for and the earlier right relied upon.’
      
      36      That finding must be upheld, without any need to rule on the question of whether a domain name can be regarded as an enforceable
         right. The validity of a national trade mark, in this case the intervener’s, may not be called in question in proceedings
         for registration of a Community trade mark, but only in cancellation proceedings brought in the Member State concerned (Case
         T-6/01 Matratzen Concord v OHIM − Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 55). Moreover, although it is for OHIM to ascertain, on the basis of evidence which it is up
         to the opponent to produce, the existence of the national mark relied on in support of the opposition, it is not for it to
         rule on a conflict between that mark and another mark at national level, such a conflict falling within the competence of
         the national authorities (Case T-269/02 PepsiCo v OHIM – Intersnack Knabber-Gebäck (RUFFLES) [2005] ECR II-1341, paragraph 26; see also, to that effect, Case T‑288/03 Teletech Holdings v OHIM – Teletech International (TELETECH GLOBAL VENTURES) [2005] ECR II-1767, paragraph 29).
      
      37      Therefore, as long as the earlier national mark is in fact protected, the existence of a national registration or another
         right predating that former mark is irrelevant in the context of opposition to a Community trade mark application, even if
         the Community trade mark applied for is the same as a national trade mark held by the applicant or another right predating
         the national mark on which the opposition is based (see, to that effect, Case T-185/03 Fusco v OHIM – Fusco International (ENZO FUSCO) [2005] ECR II-715, paragraph 63). Thus, even if rights over earlier domain names may be treated in the same way as an earlier
         national registration, in any event, it is not for the Court to rule on a conflict between an earlier national trade mark
         and rights over earlier domain names, as such a conflict does not come within the jurisdiction of the Court.
      
      38      In the present case, it must be noted that the applicant has, in actual fact, on the basis inter alia of its domain name ‘pagesjaunes.com’,
         attempted to obtain before the competent national authorities a declaration of invalidity of the various PAGES JAUNES trade
         marks of which the intervener is the holder. However its application for invalidity was dismissed by the decisions of the
         Tribunal de Grande Instance, Paris (Regional Court, Paris) (France) of 14 May 2003 and of the Cour d’Appel, Paris (Court of
         Appeal, Paris) of 30 March 2005. Moreover, since those two decisions did not examine the validity of the earlier trade mark
         claimed in the present case, but that of other PAGES JAUNES trade marks of which the intervener is the holder, they do not,
         in any event, have any bearing in the present case, since the earlier trade mark is still valid.
      
      39      Further, the decision of the administrative panel of WIPO dealt only with the question of a possible transfer of the domain
         names ‘pagesjaunes.com’ and ‘pagesjaunes.net’ to France Télécom, and not that of the likelihood of confusion between ‘pagesjaunes.com’
         and LES PAGES JAUNES, so that it has no relevance for the present proceedings. Furthermore, WIPO also did not rule on the
         validity of the earlier trade mark.
      
      40      Consequently the applicant cannot rely on its claimed earlier right based on the domain name ‘pagesjaunes.com’ in the present
         proceedings.
      
      41      Thus, it must be examined whether the Board of Appeal correctly applied Article 8(1)(b) of Regulation No 40/94 in the present
         case.
      
       The application of Article 8(1)(b) of Regulation No 40/94
      42      In the words of Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade
         mark applied for is not to be registered if, because of its identity with or similarity to the earlier trade mark and the
         identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the
         part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the
         likelihood of association with the earlier trade mark. In addition, under Article 8(2)(a)(ii) of Regulation No 40/94, earlier
         trade marks means trade marks registered in a Member State with a date of application for registration which is earlier than
         the date of application for registration of the Community trade mark.
      
      43      According to established case-law, the risk that the public might believe that the goods or services in question come from
         the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion.
         
      
      44      According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the perception
         that the relevant public has of the signs and goods or services at issue, taking into account all factors relevant to the
         circumstances of the case, in particular the interdependence of the similarity between the signs and between the goods or
         services covered (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33, and the case-law cited).
      
      45      In the present case, the mark upon which the opposition was based is a national trade mark registered in France. Therefore,
         the relevant territory for the analysis of the likelihood of confusion is the French territory.
      
      46      Given that the goods in question are everyday consumer goods, the relevant public is the average French consumer who is deemed
         to be reasonably well-informed and reasonably observant and circumspect.
      
      47      It is not disputed that the goods covered by the two opposing marks are identical. The two marks cover ‘printed matter, newspapers,
         periodicals, directories’ in Class 16 of the Nice Agreement. Although the opposition was also based on goods and services
         in other classes (Classes 9, 35, 38, 41 and 42) for which the earlier trade mark was registered, there is no need to examine
         them, since the contested decision was based solely on the goods covered by Class 16.
      
       Comparison of the signs
      48      According to settled case-law, the global assessment of the likelihood of confusion, as far as concerns the visual, aural
         or conceptual similarity of the opposing signs, must be based on the overall impression given by the signs, bearing in mind,
         inter alia, their distinctive and dominant components (see Case T-292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 47, and case-law cited).
      
      49      The applicant takes the view that the opposing marks are not similar, whereas OHIM and the intervener submit that they are.
      
      50      The marks to be compared are the following:
      
      
               Earlier trade mark
            
            
               Trade mark applied for
            
         
               
            
            
               PAGESJAUNES.COM
            
         
      51      The applicant points out that it is first necessary to assess the opposing marks overall and to consider their characteristic
         or distinctive components, before proceeding with the comparison. The earlier mark is characterised by a particular graphic
         representation highlighting the expression ‘pages jaunes’, which is descriptive, commonplace and generic.
      
      52      It must be borne in mind that, according to settled case-law, a complex trade mark can be regarded as being similar to another
         trade mark which is identical or similar to one of the components of the complex mark, if that component forms the dominant
         element within the overall impression created by the complex mark. That is the case where that component is likely to dominate,
         by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of
         the mark are negligible within the overall impression created by it (MATRATZEN, paragraph 33; Case T-153/03 Inex v OHIM – Wiseman (Representation of a cowhide) [2006] ECR II-1677, paragraph 27, and PAM PLUVIAL, paragraph 97).
      
      53      In the present case, the expression ‘pages jaunes’ constitutes the dominant element of the earlier trade mark. It stands out
         clearly from the whole of the earlier mark, because of the size of the characters in which it is written and its dimensions
         within the mark. Moreover, the graphic representation of the words ‘les pages jaunes’, written in white on a black background,
         is not, as OHIM correctly states, original in any way and thus must be regarded as a negligible component in the visual perception
         of that mark, contrary to what the applicant claims. In addition, the article ‘les’ is written in a smaller font, which minimises
         its visual importance. Therefore, since all the other components of that mark are negligible, the visual impression of the
         earlier trade mark is dominated by the word component ‘pages jaunes’.
      
      54      That finding cannot be called into question by the applicant’s argument that the expression ‘pages jaunes’ has no distinctive
         character, because it is descriptive, commonplace and generic. The weak distinctive character of an element of a complex mark
         does not necessarily imply that that element cannot constitute a dominant element since, because, in particular, of its position
         in the sign or its size, it may make an impression on consumers and be remembered by them (Representation of a cowhide, paragraph 32; see also, to that effect, Case T‑115/02 AVEX v OHIM – Ahlers (a) [2004] ECR II-2907, paragraph 20).
      
      55      Consequently, it is not necessary to rule, at this stage of the assessment, on the possible weak distinctive character of
         the expression ‘pages jaunes’, since it is obvious, having regard to the findings at paragraph 53 of this judgment, that it
         is that expression which is likely to make an impression on consumers and be remembered by them.
      
      56      In respect of the trade mark applied for, PAGESJAUNES.COM, which is purely a word mark, it must be noted that it is made up
         of two parts. The component ‘pagesjaunes’ constitutes the dominant component on account of its length and its position. The
         ending ‘.com’ is merely secondary, referring simply to an internet address.
      
      57      As regards the visual comparison between the opposing signs, the applicant claims that the earlier trade mark comprises three
         words with a total of five syllables, while the trade mark applied for comprises only one word of six syllables. According
         to the applicant, the similarities arising from the word component ‘pages jaunes’, which is not very distinctive, must be
         placed in context, to focus on those aspects which differentiate the opposing marks, namely their spelling and, on the one
         hand, the existence of the article ‘les’, and on the other, the existence of the ending ‘.com’. There are, therefore, noticeable
         differences at a visual level. 
      
      58      That line of argument cannot be accepted. Even if the words ‘pages’ and ‘jaunes’ are side by side in the trade mark applied
         for, while in the earlier trade mark there seems to be a barely visible gap between the two words, the dominant components
         of those two marks are the same. Furthermore, the word components ‘les’ of the earlier trade mark, and ‘.com’ of the trade
         mark applied for, do not distinguish those marks from each other, because those components are purely secondary, as is clear
         from paragraphs 53 and 56 above. The graphic representation of the earlier trade mark is also not such as to make the marks
         different at a visual level.
      
      59      Therefore, it must be held that the opposing marks are similar at a visual level.
      
      60      In respect of the aural comparison between the opposing signs, the applicant claims that there are also significant differences
         between the two marks, since the earlier trade mark is pronounced ‘paj-jo-ne’, while the trade mark applied for is pronounced
         ‘paj-jo-ne-point-com’.
      
      61      That reasoning cannot be accepted. It is sufficient to state that the only differences between the components ‘les’ and ‘.com’,
         which are secondary, are not enough to rule out the aural similarities resulting from the reproduction of the words ‘pages’
         and ‘jaunes’, that is to say, of the dominant component of the earlier mark, in the trade mark applied for. Further, the article
         is not necessarily pronounced, which the applicant itself implicitly admits, since it makes no mention of it in its claims
         relating to the aural comparison of the marks in question.
      
      62      In respect of the conceptual comparison of the opposing signs, according to the applicant, there is no similarity, since the
         earlier trade mark undeniably calls to mind paper-based directories, the pages of which are yellow, while the trade mark applied
         for calls to mind the internet and an internet address finder. 
      
      63      That line of argument from the applicant must also be rejected. Both marks refer to yellow-coloured pages. The presence of
         the word component ‘les’ in the earlier trade mark in no way changes its conceptual content, given that that word merely fulfils
         the function of an article. The only difference relates to the ending ‘.com’ of the trade mark applied for. However, that
         ending does not alter the meaning of the expression ‘pages jaunes’, since it is restricted to suggesting the idea that the
         goods covered by the trade mark applied for can be consulted or bought over the internet.
      
      64      Consequently, it must be concluded that the marks in question are similar, and that the Board of Appeal was fully entitled
         to find, at paragraph 20 of the contested decision, that the similarity between the marks was striking at both the visual
         and aural levels and the conceptual level.
      
      65      It is now necessary to consider whether, overall, there is a likelihood of confusion between the opposing marks.
      
       The likelihood of confusion
      66      The Board of Appeal’s position as regards whether a likelihood of confusion exists is set out at paragraph 21 of the contested
         decision as follows:
      
      ‘If one adds to [the striking similarity between the opposing marks] the fact that they would be used for identical goods,
         offered to the same public, living in the same territory, the likelihood of confusion is not merely probable, but assured.
         French users will think that PAGESJAUNES.COM is the internet version of the paper directory [bearing the trade mark] LES PAGES JAUNES
         and that, obviously, the two products are offered by the same undertaking.’
      
      67      The applicant claims that, taking into account its very weak distinctive character, the earlier trade mark can, by its very
         nature, benefit only from limited protection, consisting merely in a prohibition on the slavish reproduction of it, without
         ever conferring on the intervener an exclusive right over the expression ‘pages jaunes’. According to the applicant, the Board
         of Appeal omitted to take into account the very weak distinctive character of the earlier mark when comparing the marks in
         question.
      
      68      It must be pointed out, in that context, that it is clear from the contested decision that the Board of Appeal held that the
         earlier trade mark had a ‘normal distinctive character’.
      
      69      Without needing to examine the applicant’s various arguments in relation to the alleged weak distinctive character of the
         earlier trade mark, it is sufficient to observe that, even if it were considered that the Board of Appeal had wrongly decided
         that the earlier trade mark had a ‘normal distinctive character’, such an error cannot lead to the annulment of the contested
         decision. 
      
      70      The finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood
         of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing
         the likelihood of confusion (see, by analogy, Case C-39/97 Canon [1998] ECR I-5507, paragraph 24), it is only one factor among others involved in that assessment. Thus, even in a case involving
         an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity
         between the signs and between the goods or services covered (see, to that effect, Case T-112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II-949, paragraph 61).
      
      71      In addition, the approach taken by the applicant in that respect would have the effect of disregarding the factor of the similarity
         of the marks in favour of one based on the distinctive character of the earlier national mark, which would then be given undue
         importance. The result would be that where the earlier national mark is only of weak distinctive character a likelihood of
         confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree
         of similarity between the marks in question (order of 27 April 2006 in Case C-235/05 P L’Oréal v OHIM, not published in the European Court Reports, paragraph 45). Such a result would not, however, be consistent with the very
         nature of the global appreciation which the competent authorities are required to undertake by virtue of Article 8(1)(b) of
         Regulation No 40/94 (judgment of 15 March 2007 in Case C-171/06 P T.I.M.E. ART v Devinlec and OHIM, not published in the European Court Reports, paragraph 41).
      
      72      Therefore, it must be held that there exists, in the present case, a likelihood of confusion, given that the goods in question
         are identical and given the similarity between the opposing signs. As the Board of Appeal correctly held at paragraph 21 of
         the contested decision, French consumers could think that the trade mark applied for, PAGESJAUNES.COM, is the internet version
         of the paper-based directory bearing the LES PAGES JAUNES trade mark and that, therefore, the two products are offered by
         the same undertaking.
      
      73      In those circumstances, the assertion that the earlier trade mark has no renown must also be rejected. Since the Board of
         Appeal did not base its decision on the renown of the earlier trade mark and it correctly held there is a likelihood of confusion,
         the possible lack of renown would not in any way affect the legality of the contested decision.
      
      74      It follows from all the above that the action must be dismissed.
      
       Costs
      75      Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay
         the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it
         must be ordered to pay the costs in accordance with the forms of order sought by OHIM and the intervener.
      
      On those grounds,
      THE COURT OF FIRST INSTANCE (Third Chamber)
      hereby:
      1.      Dismisses the action;
      2.      Orders Xentral LLC to pay the costs.
      
               Jaeger
            
            
               Tiili
            
            
               Tchipev
            
         Delivered in open court in Luxembourg on 13 December 2007.
      
               E. Coulon
            
             
            
                     M. Jaeger
            
         
               Registrar
            
             
            
                     President
            
         * Language of the case: French.