Telstra and Yellowbook.com.au jaundiced double fail after battle

Phone Directories Company Australia P/L v Telstra Corp Ltd [2014] FCA 373

 

Key issues

Colour trade marks and word marks referring to colours – inherent adaptation to distinguish.

Facts

T applied to register YELLOW as a trade mark for print and online phone directories and other goods and services.  P and Yellowbook.com.au Pty Ltd (Y) unsuccessfully opposed that application.  The delegate found that YELLOW was not directly descriptive of the services covered by the application and that the mark had acquired some capacity to distinguish T’s services given its extensive use before the application date.

Y applied to register YELLOWBOOK.COM.AU as a trade mark for print and online phone directories and other goods and services. T unsuccessfully opposed that application.

Relevant grounds of opposition were s 41 (not or insufficiently inherently adapted to distinguish/no acquired distinctiveness through use), s 44 (substantially identical with or deceptively similar to an existing registered mark in respect of similar goods or services) and s 59 (no intention to use).

The unsuccessful parties appealed to the Federal Court with the appeals being heard together.

Court decision and reasoning

T’s YELLOW application was rejected under s 41 – not inherently adapted to distinguish.  Despite lodging extensive evidence, T had failed to discharge the onus to show that as a result of its use of YELLOW, the mark was associated with it.  The pre-application use by T of “YELLOW” as part of other trade marks (eg YELLOW PAGES) was not use of YELLOW on its own and use of “YELLOW” by itself was just a shorthand reference to T’s other marks.  The post-application use was also insufficient for similar reasons.  T’s surveys showed that an association only arose when participants were prompted in relation to YELLOW PAGES.

T’s YELLOW application also rejected under s. 44 – on the grounds that it was deceptively similar to prior registered marks including YELLOW DUCK and YELLOW ZONE.

The judge referred to prior decisions and commentary that colour marks are generally not inherently adapted to distinguish.  By analogy, the same applies to a word mark denoting a colour.

The evidence showed that yellow is in common use in Australia and overseas for directories.  Accordingly, it was likely that other traders, without improper motives, may want to use the colour/word.  Evidence of the colour yellow being in common use overseas was relevant to the likely conduct of traders in Australia.

P’s YELLOWBOOK.COM.AU application was rejected under s. 44 as being deceptively similar to T’s YELLOW PAGES.  The addition of .com.au does not mean the mark is treated differently.  The distinctive and important feature of each mark is “Yellow”.  “Pages” and “book” connote similar concepts.

The new owner of Sensis (the owner of the Yellow Pages business previously owned by T) has appealed to the Full Federal Court. T will play no role in the appeal.

Key lessons

Colour trade marks (including a word for the colour) are difficult to obtain without substantial evidence of use of the mark (independently of other composite marks incorporating the colour or word).

Adding .com.au to a mark does not trigger any special considerations in establishing distinctions from existing marks.

Overseas use may be relevant to the likelihood that Australian traders will legitimately want to use the mark.